Avoiding Litigation Through Lessons Learned in Licensing
hosted by the Iowa Chapter Monday, May 20, 2024 10:00am - 2:00pm - Central Time
Iowa State University's Economic Development Core Facility 1805 Collaboration Place Ames, IA 50010
Morning Session: Learning from License Agreement Disputes: Insights and Lessons Learned to Improve Your Contracts and Mitigate Risk
David Prange, Partner, Robins Kaplan LLP Benjamen Linden, Partner, Robins Kaplan LLP
Agreement language matters. Time and again parties end up in litigation when the language of their agreements proves ambiguous. In many cases the ambiguity might have been avoided during drafting, as sometimes small changes to language, or a careful extra eye in review, may have been all that was needed to avoid a dispute. What should the drafter look out for? Does the complexity of the relationship matter, for example if the parties contemplate a long-term relationship that may involve multiple contracts? In comparison to a single-agreement relationship, broader multiple-contract relationships present some unique challenges when trying to craft language that will age gracefully, provide flexibility to the relationship, and control any later potential dispute. Using recent cases as a guide, including cases that we litigated and successfully presented to a jury, we identify specific contract drafting lessons related to the use of defined terms, the interplay of multiple contracts in commercial relationships, improving dispute resolution provisions, and defining the scope of a license. With these lessons from litigation in mind, we present strategies to help identify and address issues of ambiguity before they result in a dispute. Afternoon Session: Lessons Learned in Licensing
David Prange, Partner, Robins Kaplan LLP Benjamen Linden, Partner, Robins Kaplan LLP Nicholas Krob, Senior Counsel at McKee Voorhees & Sease PLC Julia Klaren
This panel will discuss common issues in licensing and best practices to address IP licensing issues. Panelists:
| David A. Prange, Partner, Robins Kaplan LLP David is a skilled courtroom advocate and trusted business advisor for technology-focused companies facing high-stakes commercial and intellectual property disputes. As a partner in the National IP and Technology Litigation Group at Robins Kaplan LLP, and a leader of the firm’s trade secret litigation practice, David provides pragmatic advice that aligns legal strategies with business goals, guiding his clients through complex legal challenges. David’s clients appreciate his leadership, integrity, and proven ability to deliver business-minded solutions for their most sophisticated commercial and IP-related challenges. As plaintiff’s counsel, David helps his clients capitalize on the value of their IP assets through vigorous enforcement, even against entire industries. He is trial and conflicts counsel for plaintiff TQ Delta in a series of related lawsuits alleging infringement of patents covering Digital Subscriber Line modem technology, for which TQ Delta has the largest patent portfolio in the industry. David’s record of success also includes a judgment of more than $12 million against Apple for infringing upon patents covering audio player technology, as well as multiple confidential settlements in the maritime navigation industry involving the assertion of client Honeywell navigation and display patents applicable for navigating aircraft. As defense counsel, David has a track record of driving successful outcomes for his clients to protect their valuable interests and mitigate exposure. For example, David was lead trial counsel for two small-business clients in a jury trial on claims of copyright infringement, breach of contract, and tortious interference with prospective economic advantage; on the plaintiff’s jury demand of $27.4 million, a jury delivered a complete defense verdict in favor of our clients. The plaintiff had initially demanded over $160 million. In a patent infringement case, David defeated a jury demand for lost profits damages in which the defendant participated in a two-supplier market. David also obtained a complete dismissal of all claims against a Fortune 500 medical device company in a dispute involving patent inventorship and unjust enrichment claims, and allegations of trade secret misappropriation. As an experienced trial attorney and counselor, David has represented clients from individual inventors and small businesses to Fortune 500 companies in the assertion and defense of their intellectual property and contractual rights. He has appeared in federal district courts across the country, state and federal appellate courts, the International Trade Commission, and the Patent Trial and Appeal Board. |
| Benjamen C. Linden, Partner at Robins Kaplan LLP Ben brings his intellectual curiosity, diverse experience, and technical acumen to solve a variety of challenging legal and business issues. Ben’s practice is focused in the area of intellectual property where he has represented a diverse group of clients—from solo inventors to Fortune 500 industry leaders. He has advised clients on a variety of litigation and transactional matters involving patent, trade secret, contract, and copyright law. These matters encompassed a wide range of technologies and services including speech codecs, wireless communications, physical and logical interfaces for data transfer, natural language processing, graphical user interfaces, search engine optimization, and online analytics and marketing. Ben attended law school at the William Mitchell College of Law focusing his studies on intellectual property and international law. At William Mitchell, Ben developed an independent research program which allowed him to travel to Cuba to meet and interview University of Havana faculty and intellectual property practitioners. While in school, Ben also served as a Judicial Extern to the Honorable Franklin L. Noel and the Honorable Ann D. Montgomery, U.S. District Court, Minnesota. Before law school, Ben worked four years in a number of federal agencies for the defense contractor, BAE Systems. There, he used his undergraduate degree in computer science to support federal biometric identification programs and information technology management. | | Nicholas Krob, Senior Counsel at McKee, Voorhees & Sease, PLC
Nicholas Krob
joined McKee, Voorhees & Sease in 2016 after working as a judicial
law clerk for the Fifth Judicial District of Iowa. He is a member of the
firm’s Litigation Department and practices a variety of areas including
trademarks, trade secrets, copyrights, and intellectual property
licensing. Nicholas
graduated summa cum laude from the University of Northern Iowa in 2012
with a Bachelor of Arts in Philosophy, Sociology, and Criminology, and a
minor in Politics and Law. He attended Drake University Law School as a
Dwight D. Opperman Scholar and graduated with high honors in 2015.
Nicholas was awarded the Drake Law School Alumni Service Award at the
2019 Drake Law School Supreme Court Celebration. |
| Moderator: Julia Klaren Julia Klaren is a Former Associate Director of Intellectual Capital (IC) Management. Julia spent nineteen years at Collins Aerospace in IC focused business areas. Thirteen years were in the IC Management department at Collins Aerospace providing support to the Business Units on IC valuation, IC Strategy, IC protection and management, JV creation and IC acquisition and divestiture and business process for IC focused transactions. Prior to her experience at Collins Aerospace Julia has worked in Banking, Finance, Publishing and Telecommunications in various roles including time working in a startup. Julia holds a B.A.in Accounting from Boston College and an M.B.A. from University of Iowa. Julia is the current chair of the LES Iowa Chapter.
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Cost: includes lunch
Members | $25.00
| Student Members
| $10.00
| Non-Members | $40.00 |
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