Driving Innovation: Standards in Licensing and

Intellectual Capital Management

May 14, 2019

San Jose, CA

Driving Innovation:  Standards in Licensing and Intellectual Capital Management

At this one-day meeting, the topic was standards and how they enhance the innovation economy by communicating value and easing transactions from the boardroom to the bargaining table.  Our keynote speaker for the event was David Kappos, Partner at Cravath, Swaine & Moore, and former Under Secretary of Commerce for Intellectual Property.

Keynote Speaker

David Kappos
Partner, Cravath, Swaine & Moore; Former Under Secretary of Commerce for Intellectual Property


Opening Remarks / Introduction to Standards in Intellectual Capital Management
John Cabeca, Director, Silicon Valley USPTO
Bill Elkington, Collins Aerospace, Immediate Past President and Past Chair, Licensing Executives Society (USA and Canada), Inc.

Innovation, Interoperability and Efficiency through Standards
Why users adopt technical standards, and why innovators invest in their development

Technical standards have achieved wide adoption and have contributed to substantial social welfare. Standards are widespread beyond ICT, and are recognized to provide significant efficiencies by enhancing horizontal competition in the downstream market, increasing competition in the development and inclusion of technologies, reducing costs and lowering barriers to entry. While benefits of technical standards have been widely recognized by authorities and scholars, substantial inefficiencies can arise from opportunistic behavior and suboptimal licensing conducts by both users and developers of standards. The panel will explore efficiencies and inefficiencies associated with open standards, competition among standards – both open, consensus-based and de-facto – from proprietary solutions, and how industry-led, efficiency-enhancing approaches – including best practices and business process standards – can improve licensing practices across a variety of industries. Panelists active in the development or impacted by the use of standards will participate to the discussion, coming from a variety of industries and verticals such as telecom, media, automotive, etc.

Matteo Sabattini, PhD, MBA, Director IP Policy, Ericsson Inc.

Confirmed Panelists
Christian Hannon, Patent Attorney, USPTO Office of Policy and International Affairs
Bowman J. Heiden, Center for Intellectual Property
Luke McLeroy, VP Business Development, Avanci
Rob Yost, Intellectual Property Counsel, Visa

Improving IP Valuation Outcomes through the Use of Standards
Intellectual property (IP) is valued on a regular basis for a variety of purposes including transactions (licensing, buy/sell, M&A, joint ventures, etc.), financing and investment decisions (debt and equity), tax strategy and compliance, financial reporting, litigation, and others.  Performing accurate IP valuations for these purposes is challenging and often leads to significant disagreement among interested parties.  LES’s development of IP valuation standards will assist those who are valuing IP to conclude on values that are increasingly more supportable and reliable by identifying and defining a set of procedures, approaches, and reporting structures that will bring commonality to valuations performed by different stakeholders.  The successful development and implementation of these standards will assist parties in conducting transactions and make decisions more efficiently and effectively.  This panel will bring together diverse perspectives to explore the current challenges associated with IP valuation and will identify how IP standards can address these challenges.

Scott Weingust, Managing Director, IP Services, Stout Risius Ross, LLC

Joe Agiato, Founder, President and CEO, PIUS Limited LLC
Louis Carbonneau, Founder and CEO, Tangible IP
Alex Rehmeier, Sr. Manager IP Policy and Training, Intellectual Property Management, The Boeing Company
David J Rikkers, Senior IP Counsel, Office of General Counsel, Raytheon Company

Luncheon and Keynote Address
Behavioral Issues in Licensing of SEPs and other IP — Defining Acceptable and Best Practices through Voluntary Standards
David will explore the behavioral issues involved in negotiating IP licenses, including licenses for standard essential patents (SEPs). Issues include hold-out by licensees, hold-up by licensors, global royalties, provision of infringement proof-packages, timeliness of responses, among others. Best practices, as well as acceptable practices, are suggested as the beginnings of a framework that can guide participants on all sides of IP licensing transactions.

Keynote Speaker
David Kappos, Partner, Cravath, Swaine & Moore; former Under Secretary of Commerce for Intellectual Property

IP Management for Startups
Intellectual property is critical to startups as it is one of the few assets that a startup will have.  Yet, obtaining patent protection can be expensive for a startup, particularly early when funds are scarce, and the cost of capital is very high.  What are various strategies that startups can use to protect their IP?  What are the consequences of not obtaining early protection on the key IP? How is IP viewed by venture capitalists and angel investors?

Sanjay Prasad, Prasad IP, PC

Jeff Bartholomew, attorney, Robinson Waters & O’Dorisio
Katharine Ku, Chief Licensing Advisor, Wilson Sonsini, Goodrich & Rosati
Nola Masterson, Managing Director, Science Futures, Inc.
Soody Tronson, Founding Managing Counsel, STLG Intellectual Property Law Firm; Founder & CEO, Presque
Larry Udell, Founder/Chairman, Silicon Valley Chapter, Licensing Executives Society (USA & Canada)

Intangible Assets in the Boardroom
Revealing the corporate value of your intangible assets in boardroom terminology

The Intangible Assets in the Boardroom Standard provides a five-step process built on six core principles, a materiality filter, and a terminology translator. This standard will enable board directors to more effectively oversee the collective contribution of their intangible assets to overall corporate value as reflected by commonly used financial performance metrics.

Ron Laurie, Executive Chairman, InventionShare

Edgar Baum, Founder and CEO, Avasta Incorporated
Phil Hartstein, President and CEO, Finjan Holdings Inc.
Paul Roberts, Vice President of Commercialization, GE Ventures

Round Table Discussion Session

Thank you Sponsors