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Virtual Half-Day Event - Trade Secrets, Data and AI: Assets for Growing Business and Generating Revenue
Wednesday, May 8, 2024
12:30pm - 4:00pm
ET 11:30am - 3:00pm CT 10:30am - 2:00pm MT 9:30am - 1:00pm PT
Program: Join LES USA & Canada to hear how non-patented assets, including trade secrets, data, and AI, have become prominent drivers of value and revenue across industries. Leading in-house and outside counsel and professionals will share real-life, practical tips and takeaways regarding legal and business strategies for protecting and monetizing these assets.
Learning Outcomes:
• Interrelationship between patent and other IP strategies • Determining when to patent and when to retain as trade secret • Operational, technological and legal/contractual steps for protecting trade secrets/confidential info • Strategies for dealing with AI-created innovations • Business models for licensing data • Key issues in (do’s and don’t’s of) licensing non-patented assets (trade secrets, data, software, AI)
CLICK HERE FOR THE UPDATED AGENDA

*IP Owner Members:
Contact info@les.org to register.
Speakers:
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Ian DiBernardo, Chair IP Litigation, Co-Head US Technology Practice, Brown Rudnick LLP
Ian
DiBernardo is a partner and chair of Brown Rudnick's Intellectual
Property Litigation Practice Group. He is also co-practice group leader
of the U.S. Technology group. His dual leadership roles reflect his
decades of experience counseling clients throughout the entire lifecycle
of IP and technology, from creating worldwide patent portfolios, to
bringing products to market, to licensing IP and technology, to
litigating bet-the-company cases. Ian counsels IP owners in
creating, monetizing, asserting, and defending their IP assets, and
investors in sourcing, evaluating, and executing on various IP-centric
investments. On behalf of IP owners and operating entities, he
has litigated various types of intellectual property disputes, including
patent, trade secret, trademark, unfair competition, and breach of
contract claims. He has also been lead counsel in a number of post grant
proceedings before the Patent Trial and Appeal Board. He
frequently counsels clients on pre-litigation intellectual property
matters, including issuing freedom-to-operate opinions, establishing
“clean-room” and other procedures for on-boarding employees, and
mitigating IP risk with departing employees, including managing IT
forensic investigations and addressing concerns of trade secret
misappropriation with subsequent
employers.
Ian
has structured and negotiated a range of intellectual property and
technology transactions, including patent, trade secret, know-how, data,
copyright, and trademark licenses, and professional services,
outsourcing, cloud computing, supply, distribution, and joint
development agreements. He has represented clients in a broad range of
corporate transactions, including mergers and acquisitions, strategic
alliances, joint ventures, and corporate finance transactions. On behalf of private funds and other clients, Ian frequently conducts
due diligence on and negotiates IP related investments, including patent
acquisitions, IP-back loans, royalty transactions, and litigation
financing. He has worked with a number of high-tech and life
science technologies, including: AgriTech, food science, and
nutraceuticals; Artificial Intelligence/Machine Learning; Augmented
Reality, Virtual Reality, image processing and computer vision;
CleanTech/GreenTech, FinTech, including securities trading and back
office systems and data; MedTech and digital health, including
endoscopic, endoluminal, robotic and other surgical instruments, and
bioinformatics; computer networking and software, and semiconductors.
Ian
has a long history of pro bono service. He has been repeatedly
recognized by Chambers USA and Super Lawyers, and he has been named an
IP Star by Managing Intellectual Property and a leading individual for
litigation and transactions by IAM Patent 1000. In the latest Chambers
guide, clients have commented that Ian is “top notch in his analytical
ability, client skills, and deep IP transactional and litigation
experience” and “an outstanding patent litigation and licensing
attorney. Ian’s advice cuts right to the heart of the issue at hand. He
is very creative in his solutions and he identifies issues others miss.”
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| Stephen Fefferman, Executive Vice President, Deputy General Counsel, Business & Legal Affairs for Paramount Global Stephen
leads the Advertising, Global Sourcing and Enterprise Technology legal
group, a team of approximately 30 lawyers and legal professionals. Stephen
supports broad multi-disciplinary client groups within Paramount,
providing transactional and advisory support to the advertising sales
and operations, cross-brand marketing, research and insights, content
protection, and technology divisions. The Paramount Global domestic ad
sales organization alone generates approximately $10 billion dollars in
annual revenue and the cross-functional technology organization manages
billions of dollars of infrastructure across the globe. Prior to joining Viacom in 2010, Stephen
was Vice President, Assistant General Counsel for Marc Ecko
Enterprises, a multi-billion dollar fashion, apparel and lifestyle
brand. Stephen began his legal career as an associate at Stroock & Stroock & Lavan and later at Meister, Seelig & Fein. He is a graduate of the University of Michigan and the Fordham University School of Law. | 
| Mark Leonard, CEO, ScaleIP Mark Leonard is CEO of ScaleIP, a IP monetization software. He is restarting the LES Colorado Chapter. Mark is on a mission to improve science’s impact on society. His passion for Big Data, Machine Learning, and Data Modeling began during his PhD program at the University of Colorado and NOAA. | 
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Alex Markov, Head of Licensing, ASM International
Alex
Markov is currently the Head of IP Licensing at ASM International, CVD
equipment manufacturing supplier in semiconductors industry. Alex has 25
years of semiconductor industry experience in the full array of
semiconductor processes and operations. In his current role, Alex is
responsible for all IP commercialization at ASM, both patents and trade
secrets/know-how.
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| Jeff Stern, Deputy GC, MSCI, Inc. Jeff Stern is MSCI’s Deputy General Counsel, Head of Commercial Legal and Head of Compliance. Prior to joining MSCI, Jeff held a variety of positions in the Legal and Compliance Division of Morgan Stanley, including in its Technology Law Group and Infrastructure Compliance. Previously, Jeff was an associate at Latham & Watkins and at Weil, Gotshal & Manges. Jeff attended the University of Virginia School of Law, where he was a member of the Virginia Law Review, and Harvard College, graduating magna cum laude.
Jeff believes passionately in diversity and inclusion as a means to attract top talent, turbocharge team performance, and achieve new levels of client-centricity. Jeff co-founded MSCI’s All Abilities Employee Resource Group for employees with disabilities, caregivers and allies. He also co-founded the All Abilities Group of the New York City Chapter of the Association of Corporate Counsel when he was Chapter President. |

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Kathleen Turland, former Chief Legal Officer, ArisGlobal
Global, strategic legal leader, known for ability to spot issues and mitigate risk. Expert at working collaboratively and bringing cross-functional teams together to solve business and legal problems pragmatically. Sought after colleague and manager. Broad based experience across multiple industries including energy, finance, construction, technology, and consumer products. -- Proven success managing teams through large scale company transitions. -- Able to deliver complex legal advice in a pragmatic and understandable way. -- Highly adept at issue spotting, applying practical judgment, and devising business-oriented solutions. -- Focused on mitigating risk while maximizing business strategy and growth. -- Partner to HR and People Management teams on labor and employment issues. -- Experienced at leading corporate governance, and corporate transactions/acquisitions/dispositions -- Demonstrated ability developing right-sized legal, compliance and regulatory programs -- Top-notch litigator and successful manager of complex litigation and investigation matters globally. -- Known for authentic style, work ethic, and sense of humor.
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Jennifer Vanderhart, PhD, Managing Director, Secretariat Jennifer is a PhD Economist and expert witness
specializing in damages and valuation analysis in the areas of
intellectual property, breach of contract, international arbitration
proceedings, antitrust, and commercial damages. She is based in
Washington, DC and have testified more than 50 times in U.S. state and
federal courts, in front of domestic and international arbitration
panels, and in depositions. Her clients include companies in wide range
of industries and retail sectors including education, computer hardware
and software, toys, alcoholic beverage distribution, medical devices,
entertainment, mining, tobacco and financial services.
She has also assisted companies in patent and trademark licensing negotiations, royalty investigations and calculations, and intellectual property
and asset valuations. She has also testified as to the appropriate data cost-sharing compensation under FIFRA. She taught at Texas A&M University and has published on valuation, damages and, econometrics, and intellectual property
and is a frequent speaker on these topics at conferences and lectures. She is a member of the American Society of International Law, of which she recently co-chaired the Intellectual Property Interest Group, the Licensing Executives
Society, where she serves on the Advisory Council for the DC Chapter, and she is an associate member of the American Bar Association, where she co-chairs the Intellectual Property Litigation subcommittee.
Her specialties
include Intellectual property, international arbitration, commercial litigation, ASCAP, FIFRA, antitrust, patent infringement damages, trademark infringement damages, trade secret damages, valuation, expert witness.
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| Ray Van Dyke, Attorney, Van Dyke Intellectual Property Law Raymond
Van Dyke is an IP/Patent Attorney and Educator. In his practice he
helps a variety of clients in their IP matters. He specializes in patent
and trademark matters in various technologies, litigation, licensing,
and procurement. After being a partner in big firms, he started his own
IP consultancy in Washington, DC, with diverse domestic and
international clientele and technologies, handling matters at the USPTO,
Federal Circuit and local State and Federal courts. He is an Adjunct
Professor at Geroge Washington University, and teaches IP courses for
engineers, business people and other professionals at the University of
Maryland and George Mason University, also teaching about the history
and philosophy of IP, history of technology, famous inventors and deals,
etc. He has also taught at Southern Methodist University, American
University, and across the world. Ray also teaches at NIH and other
institutions. He is the Senior Vice President of Special Events at LES
and Chair of the LES DC Chapter; an AIPLA Fellow and former Chair of a
number of Committees; Chair of the Montgomery County Bar Association IP
Section, former Board Member of the DC Chapter of the ACM, former Board
Member of ITechLaw (Computer Law Association); and continues his
involvement in IPO, the MSBA, AIPPI, ABA, BIO, IEEE and other legal and
technical organizations. Ray got his BS, MS in Computer Science and law
degree from the University of North Carolina at Chapel Hill. He is
licensed to practice in DC, MD, NY, NJ and TX, as well as the USPTO, and
is a member of the U.S. Supreme Court, Federal, Second, Third, Fourth
and Fifth Circuit Courts and a number of District Courts, Court of
International Trade and Federal Court of Claims. Ray also continues in
his efforts to fight on behalf of the small inventor community in
protecting the principles of the patent system. |
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