The document provides guidance on devising international patent litigation strategies. It discusses defining goals for litigation, understanding the tools available, where to deploy those tools based on jurisdictional factors, and executing a coordinated global campaign. Specifically, it emphasizes the importance of thoroughly understanding local laws and customs in different jurisdictions, developing a comprehensive budget and timeline, and knowing when objectives have been achieved or when to change strategies. Managing litigation across multiple countries introduces challenges from legal and cultural differences that require careful planning and flexibility.
Managing cross-border acquisitions of technology companiesWhite & Case
Goal of our presentation is to help you as in-house counsel grasp the process and framework for approaching a cross-border technology transaction
What is a cross-border transaction?
Entity acquiring an entity or business in another country
In technology transactions, domestic transactions often have significant cross-border elements
What is different about a cross-border acquisition?
None of the usual rules apply
Complexity increases burden on counsel
Assess potential issues as early as possible
Three Case Studies (Series: Commercial Litigation Funding 101) Financial Poise
This webinar discusses three litigation funding case studies:
1) Disclosure of litigation funding arrangements in class action lawsuits. Recent court rulings have ordered disclosure of funding but prohibited disclosure of funder communications.
2) Non-attorney ownership of law firms. While historically prohibited, some jurisdictions now allow alternative business structures, including PWC partnering with a law firm.
3) Other developments, including a litigation funder purchasing a judgment, New York legislation on consumer funding, and securitization of litigation funding claims. The panel of litigation funding experts analyzes these cases and discusses legal and strategic implications.
An Introduction to a New Yet Old Funding Alternative (Series: Commercial Liti...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. This webinar is intended to provide an overview of the topic generally, touching on the “who,” “what,” “where,” “when,” “why” and “how’s” behind litigation funding.
To view the accompanying webinar, go to:https://www.financialpoise.com/financial-poise-webinars/an-introduction-to-a-new-yet-old-funding-alternative-2021/
Help, My Business is In Trouble! (Series: Restructuring, Insolvency & Trouble...Financial Poise
When a business becomes financially troubled, the business owner often experiences denial, paralysis, or both. Lenders commonly lose confidence and then trust in the business, as communications tend to break down, deadlines are missed, and promises are broken. Small business owners commonly have issued personal guarantees, so business failure can often lead to personal financial stress. The good news is the business and business owner usually has some options, and even some leverage. This webinar explains what a business owner should- and should not- consider and do when dealing with financial trouble. Specific topics include discussion of bankruptcy (Chapters 7 and 11); assignments for the benefit of creditors; and friendly foreclosures. This webinar provides the business owner and her advisors with an overview of various restructuring and liquidation methods, a framework for how to decide between them, and practical tips for traversing the difficult environment that is financial distress.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/help-my-business-is-in-trouble-2021/
Crowdfunding from the Start-Up's Perspective (Series: Crowdfunding)Financial Poise
How can businesses use the tools created by the JOBS Act to access capital? This webinar compares raising money online to traditional methods of capital raising. It also compares each of the different titles available under the JOBS Act. Finally, we discuss and compare the differences between security based crowdfunding and rewards based crowdfunding, exploring those instances where such a method would make sense.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/crowdfunding-from-the-start-ups-perspective-2021/
TROs and Preliminary Injunctions (Series: Newbie Litigator School 101 - Part 1)Financial Poise
Sometimes—often at the beginning of a case—you need the court to take immediate action to protect your client’s interests or to maintain the status quo while the litigation progresses. This webinar discusses procedures and strategies for obtaining temporary restraining orders and preliminary injunctions. The topics discussed include the procedural and substantive requirements for obtaining TROs and preliminary injunctions, some best practices for how to succeed on motions seeking TROs and preliminary injunctions, and how to challenge and defeat those motions.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/tros-and-preliminary-injunctions-2021/
Key Provisions in M&A Agreements (Series: M&A Boot Camp)Financial Poise
Although every deal is different, understanding any purchase/sale agreement will help you understand other purchase sale agreements. Stated another way, most M&A documents include a similar set of sections and use a similar vocabulary. This episode explains specific, common provisions and discusses how buyers and sellers approach these provisions differently, particularly in light of situational differences (e.g. whether the assets being bought and sold are equity of a company or the assets of a company; whether the seller is going to cease to exists or not). Topics covered will include tax issues; corporate governance; closing conditions; representations and warranties; indemnification provisions; earn-outs; restrictive covenants; antitrust; intellectual property; and employment issues.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/key-provisions-in-ma-agreements-2021/
Alternative Structures - PO Financing, Factoring & MCA (Series: Business Borr...Financial Poise
Purchase-order financing (P/O financing) is a type of asset-based loan designed to extend credit to a company that needs cash quickly, to fill a customer order. A company may operate with such a small amount of working capital that it cannot afford to pay the cost of producing a customer’s order. P/O financing enables such a company to not turn away business, by borrowing from a lender using the purchase order itself as collateral to support a loan.
Factoring is one of the oldest forms of business financing. Note that the term is “financing” rather than “loan” because factoring is not actually a loan. In a typical factoring arrangement, the company needing financing makes a sale, delivers the product or service and generates an invoice. The factor (the funding source) then purchases the right to collect on that invoice by agreeing to pay the company in need of financing the amount of the invoice minus a discount.
MCA lending is, in summary, an advance on a company’s sales. Financing through a merchant cash advance (MCA) is used mostly by companies that accept credit and debit cards for most of their sales, typically retailers and restaurants. The concept is this: funder purchases a portion of the company’s future credit card receivables for a discounted lump sum. The MCA funder receives the purchased credit card receivables as they are generated either by taking a percentage of the company’s daily credit card proceeds or by debiting a certain amount of funds from the company’s bank account. Depending on the risk profile of the company, it can be a more expensive form of financing for a business compared to other types of financing.
What these three things have in common is that they are each a type of “alternative lending.” Alternative to what? To the type of loan a company can get from a “regulated” commercial bank. This webinar explains these types of financing arrangements, what to consider before entering into them, and provides some tips on how to negotiate them.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/alternative-structures-po-financing-factoring-mca-2021/
Managing cross-border acquisitions of technology companiesWhite & Case
Goal of our presentation is to help you as in-house counsel grasp the process and framework for approaching a cross-border technology transaction
What is a cross-border transaction?
Entity acquiring an entity or business in another country
In technology transactions, domestic transactions often have significant cross-border elements
What is different about a cross-border acquisition?
None of the usual rules apply
Complexity increases burden on counsel
Assess potential issues as early as possible
Three Case Studies (Series: Commercial Litigation Funding 101) Financial Poise
This webinar discusses three litigation funding case studies:
1) Disclosure of litigation funding arrangements in class action lawsuits. Recent court rulings have ordered disclosure of funding but prohibited disclosure of funder communications.
2) Non-attorney ownership of law firms. While historically prohibited, some jurisdictions now allow alternative business structures, including PWC partnering with a law firm.
3) Other developments, including a litigation funder purchasing a judgment, New York legislation on consumer funding, and securitization of litigation funding claims. The panel of litigation funding experts analyzes these cases and discusses legal and strategic implications.
An Introduction to a New Yet Old Funding Alternative (Series: Commercial Liti...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. This webinar is intended to provide an overview of the topic generally, touching on the “who,” “what,” “where,” “when,” “why” and “how’s” behind litigation funding.
To view the accompanying webinar, go to:https://www.financialpoise.com/financial-poise-webinars/an-introduction-to-a-new-yet-old-funding-alternative-2021/
Help, My Business is In Trouble! (Series: Restructuring, Insolvency & Trouble...Financial Poise
When a business becomes financially troubled, the business owner often experiences denial, paralysis, or both. Lenders commonly lose confidence and then trust in the business, as communications tend to break down, deadlines are missed, and promises are broken. Small business owners commonly have issued personal guarantees, so business failure can often lead to personal financial stress. The good news is the business and business owner usually has some options, and even some leverage. This webinar explains what a business owner should- and should not- consider and do when dealing with financial trouble. Specific topics include discussion of bankruptcy (Chapters 7 and 11); assignments for the benefit of creditors; and friendly foreclosures. This webinar provides the business owner and her advisors with an overview of various restructuring and liquidation methods, a framework for how to decide between them, and practical tips for traversing the difficult environment that is financial distress.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/help-my-business-is-in-trouble-2021/
Crowdfunding from the Start-Up's Perspective (Series: Crowdfunding)Financial Poise
How can businesses use the tools created by the JOBS Act to access capital? This webinar compares raising money online to traditional methods of capital raising. It also compares each of the different titles available under the JOBS Act. Finally, we discuss and compare the differences between security based crowdfunding and rewards based crowdfunding, exploring those instances where such a method would make sense.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/crowdfunding-from-the-start-ups-perspective-2021/
TROs and Preliminary Injunctions (Series: Newbie Litigator School 101 - Part 1)Financial Poise
Sometimes—often at the beginning of a case—you need the court to take immediate action to protect your client’s interests or to maintain the status quo while the litigation progresses. This webinar discusses procedures and strategies for obtaining temporary restraining orders and preliminary injunctions. The topics discussed include the procedural and substantive requirements for obtaining TROs and preliminary injunctions, some best practices for how to succeed on motions seeking TROs and preliminary injunctions, and how to challenge and defeat those motions.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/tros-and-preliminary-injunctions-2021/
Key Provisions in M&A Agreements (Series: M&A Boot Camp)Financial Poise
Although every deal is different, understanding any purchase/sale agreement will help you understand other purchase sale agreements. Stated another way, most M&A documents include a similar set of sections and use a similar vocabulary. This episode explains specific, common provisions and discusses how buyers and sellers approach these provisions differently, particularly in light of situational differences (e.g. whether the assets being bought and sold are equity of a company or the assets of a company; whether the seller is going to cease to exists or not). Topics covered will include tax issues; corporate governance; closing conditions; representations and warranties; indemnification provisions; earn-outs; restrictive covenants; antitrust; intellectual property; and employment issues.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/key-provisions-in-ma-agreements-2021/
Alternative Structures - PO Financing, Factoring & MCA (Series: Business Borr...Financial Poise
Purchase-order financing (P/O financing) is a type of asset-based loan designed to extend credit to a company that needs cash quickly, to fill a customer order. A company may operate with such a small amount of working capital that it cannot afford to pay the cost of producing a customer’s order. P/O financing enables such a company to not turn away business, by borrowing from a lender using the purchase order itself as collateral to support a loan.
Factoring is one of the oldest forms of business financing. Note that the term is “financing” rather than “loan” because factoring is not actually a loan. In a typical factoring arrangement, the company needing financing makes a sale, delivers the product or service and generates an invoice. The factor (the funding source) then purchases the right to collect on that invoice by agreeing to pay the company in need of financing the amount of the invoice minus a discount.
MCA lending is, in summary, an advance on a company’s sales. Financing through a merchant cash advance (MCA) is used mostly by companies that accept credit and debit cards for most of their sales, typically retailers and restaurants. The concept is this: funder purchases a portion of the company’s future credit card receivables for a discounted lump sum. The MCA funder receives the purchased credit card receivables as they are generated either by taking a percentage of the company’s daily credit card proceeds or by debiting a certain amount of funds from the company’s bank account. Depending on the risk profile of the company, it can be a more expensive form of financing for a business compared to other types of financing.
What these three things have in common is that they are each a type of “alternative lending.” Alternative to what? To the type of loan a company can get from a “regulated” commercial bank. This webinar explains these types of financing arrangements, what to consider before entering into them, and provides some tips on how to negotiate them.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/alternative-structures-po-financing-factoring-mca-2021/
M&A Law: The Lawyer's Role; Recent Delaware DevelopmentsStephen Bainbridge
A two-hour presentation on the role of the lawyer in the M&A team, the place of legal due diligence in the overall buyer side's due diligence process, and a review of recent Delaware M&A legal developments. I'm available to give it to your law firm, company, or group.
Syndicated Patent Deals = Supercharging the buying and selling of patents by ...Fas (Feisal) Mosleh
The syndicated buying of patents to achieve strategic business goals. By Feisal Mosleh, patent and IP strategist, ex HP Director, Patent sales, IP group. This article lays out the framework that many companies have used and are using to buy IP assets in an aggregated manner to maximize their benefits.... Some of the world’s largest corporations joined forces to acquire patent portfolios in the high-profile Nortel and Novell deals. Consortium buying also has advantages for small and mediumsized entities looking to purchase or sell patents...
General Liability, Umbrella/Excess Coverage, Commercial Auto-Workers’ Compens...Financial Poise
As a business owner, there are a plethora of choices when it comes to insurance. This webinar touches upon all you need to know about General Liability, Umbrella/Excess Coverage, Commercial Auto Insurance, and Workers’ Compensation insurance.
General liability coverage protects the business from third party suits for Property and Bodily Injury claims. The panelists also look at potential product liability or intellectual property exposure that is not covered. Most business owners understand that commercial umbrella is a must, but how do you determine how much is the right amount? The panelists will also examine why Hired/Non-Owned is important when it comes to Commercial Auto coverage.The panelists will also touch upon best practices for managing employees who drive for your business with their own cars.
The panelists will also cover Workers’ Compensation insurance. Topics discussed include managing the costs of the insurance itself as well as the proper management of workers compensation claims. Other topics discussed include codes and classification errors, how to get money back from the insurer, as well as best practices for Independent Contractors.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/general-liability-umbrella-excess-coverage-commercial-auto-workers-compensation-2021/
Leveraging & Protecting Trade Secrets in the 21st Century (Series: Intellectu...Financial Poise
Trade secrets are a more important form of an intellectual property asset than ever.
Congress recently passed the Defend Trade Secrets Act of 2016, which created new federal laws that allow an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated. And as technology continues to exponentially progress in the digital age of the 21st Century, the need for businesses to protect and limit access to valuable and confidential trade secret information continues to rise. The progress in technology and expansion of information also promotes means for monetizing and leveraging trade secrets.
How do you identify your trade secrets, protect them, and leverage them? These are the questions this cutting-edge webinar discusses and seeks to answer.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/leveraging-protecting-trade-secrets-in-the-21st-century-2021/
A Menu of Products for Investors and Lawyers (Series: Commercial Litigation F...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. However, the term "litigation-" or "legal-" funding actually encompasses a handful of products, which vary based on borrower profile, stage and sector of litigation, use of proceeds, and ultimately, cost of capital and risk-reward profile. This webinar examines three funding products -- case fundings, law firm loans, and portfolio fundings -- and aims to inform attorneys on best solutions for their firms and clients, and provide an overview for institutional investors looking to allocate capital to litigations.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/a-menu-of-products-for-investors-and-lawyers-2021/
Single Asset Real Estate Cases (Series: Fairness Issues in Real Estate-Based ...Financial Poise
Anyone involved in the field of creditors rights on a matter involving an LLC that exists solely to hold the principal asset has surely seen the play where, the night before property is scheduled to be sold at a foreclosure auction, the debtor files bankruptcy. For those not familiar with the process, doing so invokes the “Automatic Stay”, which prohibits the secured lender from foreclosing on the property. The debtor then attempts to make their case to the court for reorganization.
But is failing to pay your mortgage really something bankruptcy was meant to solve? If the bank was going to agree to a loan modification, wouldn’t the parties have worked something out by the time the sheriff sale was set? The bankruptcy code recognizes this and therefore has a section devoted to dealing with this specific kind of bankruptcy—the Single Asset Real Estate (“SARE”) case. The goal of this episode is to look into ethical issues surrounding these matters.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/single-asset-real-estate-cases-2021/
Crowdfinance -101 (Series: Crypto, Crowdfunding & Other Crazy Concepts)Financial Poise
What is the “crowd” in Crowdfinance? What does the crowd thus buy and by what means and modes? And why should the crowd do this rather than put its money to work otherwise? What are the old (and continuing) modes for marketing and selling private securities? What is it like to purchase private securities from on-line portals? How are risks of fraud and mistake allocated there? Do on-line portals help get the rest of us in on unicorns in utero? How are equity securities purchased by the crowd turned into money? Is there a secondary market for private securities? Should ICOs be understood as crowdfinance by other means?
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/crowdfinance-101-2021/
A Menu of Products for Investors and Lawyers (Series: Commercial Litigation F...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. However, the term "litigation-" or "legal-" funding actually encompasses a handful of products, which vary based on borrower profile, stage and sector of litigation, use of proceeds, and ultimately, cost of capital and risk-reward profile. This webinar examines three funding products -- case fundings, law firm loans, and portfolio fundings -- and aims to inform attorneys on best solutions for their firms and clients, and provide an overview for institutional investors looking to allocate capital to litigations.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/a-menu-of-products-for-investors-and-lawyers-2020/
Valuing Lost Profits for Litigation Purposes (Series: Valuation)Financial Poise
A competitor, contractor or other third party has taken actions that have damaged your client’s business in the form of lost profits. How do you measure the lost profits? Must you demonstrate lost profits with certainty? Over what period do you measure the lost profits? If your client has not recovered fully, can you include estimated future lost profits? These are all important questions in a lost profits case. This webinar addresses those questions and summarizes the different methods to measure lost profits, as well as some of the critical elements that must be considered in developing and presenting your damages theory in court.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/valuing-lost-profits-for-litigation-purposes-2021/
An Introduction to a New Yet Old Funding Alternative (Series: Commercial Liti...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. This webinar is intended to provide an overview of the topic generally, touching on the “who,” “what,” “where,” “when,” “why” and “how’s” behind litigation funding.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/an-introduction-to-a-new-yet-old-funding-alternative-2020/
This document invites attendees to a shareholder protection and corporate governance forum taking place on January 30th, 2014 in Amsterdam. The forum will provide a critical update on collective, representative, and class action lawsuits in Europe and beyond. Attendees will hear from experts including the former CEO of Olympus on how stakeholders can achieve corporate governance reform. The event is designed for pension funds, institutional investors, asset management firms, and custodian banks. Registration can be completed by calling +44 (0) 20 7878 6888 or online at www.C5-Online.com/Shareholderprotection.
The presentation below examines some of the following topics:
Why should biotech companies look to sell rather than go public?
How (and why) to build your deal team
Legal matters, insurance planning and tax planning
Indemnification privisions and the advantages of doing it early on
Financial statement considerations
Corporate books and other items you will need
How to position your biotech company for a sale
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
M&A: Growth Strategy for International Companies in 2010Eliot Norman
The document discusses strategic considerations for mergers and acquisitions (M&A) and joint ventures. It covers topics such as defining an acquisition strategy, valuation issues, due diligence processes, financing options, cultural integration challenges, and post-acquisition risk management. Special issues for government contractors, cross-border deals, and tax implications are also addressed. Case studies are provided to illustrate successful M&A and joint venture deals.
The document discusses fiduciary duties and challenges following the Supreme Court's Dudenhoeffer decision. It summarizes various court cases that have addressed different types of ERISA stock drop claims. The document discusses claims based on publicly available information and whether "special circumstances" were adequately alleged. It also discusses pleading standards for claims based on inside information, examining what alternative actions plaintiffs must plausibly allege fiduciaries could have taken without doing more harm than good. The document provides examples from multiple circuit court cases.
This presentation by Professor Spencer Weber Waller, Loyola University Chicago School of Law, was made during the discussion on "Addressing competition challenges in financial markets" held at the 2017 Latin American and Caribbean Competition Forum (4-5 April 2017 – Managua, Nicaragua). More papers and presentations can be found at oe.cd/laccf.
Litigation Funding: Extending Access to Justice (Oliver Gayner and Noah Wortm...Noah Wortman
Litigation funding, over the years, has been established as an integral part of mainstream civil justice systems with a view to facilitating access to justice. Not only do litigation funders finance the cost of proceedings in exchange for a portion of the recovery, but they frequently function as coordinators amongst investor-claimants, provide access to legal resources, and (in some cases) underwrite the potentially significant risk of paying “adverse costs” (i.e., paying for the respondent’s legal bills in the event the claim is unsuccessful).
Current Trends in Leveraged Finance (Series: Leveraged Finance)Financial Poise
This webinar discusses recent trends in leveraged finance terms and practices. It covers changes to leveraged finance documents like successor LIBOR provisions and beneficial ownership requirements. It also discusses expansions in the ability to incur additional debt, designate unrestricted subsidiaries, and conduct asset sales. Finally, it explores evolving standards around financial covenants, acquisition conditionality, and the potential for a more portable capital structure. The panelists are experts on commercial finance deals and leveraged acquisitions representing major banks and borrowers.
Risk and Compliance Oct 2018 Adrià VázquezMorgan Jones
This document summarizes an interview with Adrià Vázquez, the regional TRI manager for Asia-Pacific at Tokio Marine HCC, about insuring cross-border M&A deals. Vázquez discusses the increasing but still emerging use of insurance like warranty and indemnity policies for deals in emerging markets. He notes the complex risks in these markets and how insurance can help mitigate risks and facilitate deals by resolving issues like unknown liabilities. Looking ahead, Vázquez expects continued rising demand for M&A insurance in emerging markets as the market matures and more players offer specialized coverage.
The document discusses developing a "Plan for Financial Comfort" with an experienced financial advisor. This plan would help coordinate one's financial affairs and manage complex life events by developing strategies across six areas: cash flow management, tax reduction, income preservation, retirement planning, college funding, and family protection. The goal is to significantly impact one's quality of life and family security through competent financial planning.
M&A Law: The Lawyer's Role; Recent Delaware DevelopmentsStephen Bainbridge
A two-hour presentation on the role of the lawyer in the M&A team, the place of legal due diligence in the overall buyer side's due diligence process, and a review of recent Delaware M&A legal developments. I'm available to give it to your law firm, company, or group.
Syndicated Patent Deals = Supercharging the buying and selling of patents by ...Fas (Feisal) Mosleh
The syndicated buying of patents to achieve strategic business goals. By Feisal Mosleh, patent and IP strategist, ex HP Director, Patent sales, IP group. This article lays out the framework that many companies have used and are using to buy IP assets in an aggregated manner to maximize their benefits.... Some of the world’s largest corporations joined forces to acquire patent portfolios in the high-profile Nortel and Novell deals. Consortium buying also has advantages for small and mediumsized entities looking to purchase or sell patents...
General Liability, Umbrella/Excess Coverage, Commercial Auto-Workers’ Compens...Financial Poise
As a business owner, there are a plethora of choices when it comes to insurance. This webinar touches upon all you need to know about General Liability, Umbrella/Excess Coverage, Commercial Auto Insurance, and Workers’ Compensation insurance.
General liability coverage protects the business from third party suits for Property and Bodily Injury claims. The panelists also look at potential product liability or intellectual property exposure that is not covered. Most business owners understand that commercial umbrella is a must, but how do you determine how much is the right amount? The panelists will also examine why Hired/Non-Owned is important when it comes to Commercial Auto coverage.The panelists will also touch upon best practices for managing employees who drive for your business with their own cars.
The panelists will also cover Workers’ Compensation insurance. Topics discussed include managing the costs of the insurance itself as well as the proper management of workers compensation claims. Other topics discussed include codes and classification errors, how to get money back from the insurer, as well as best practices for Independent Contractors.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/general-liability-umbrella-excess-coverage-commercial-auto-workers-compensation-2021/
Leveraging & Protecting Trade Secrets in the 21st Century (Series: Intellectu...Financial Poise
Trade secrets are a more important form of an intellectual property asset than ever.
Congress recently passed the Defend Trade Secrets Act of 2016, which created new federal laws that allow an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated. And as technology continues to exponentially progress in the digital age of the 21st Century, the need for businesses to protect and limit access to valuable and confidential trade secret information continues to rise. The progress in technology and expansion of information also promotes means for monetizing and leveraging trade secrets.
How do you identify your trade secrets, protect them, and leverage them? These are the questions this cutting-edge webinar discusses and seeks to answer.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/leveraging-protecting-trade-secrets-in-the-21st-century-2021/
A Menu of Products for Investors and Lawyers (Series: Commercial Litigation F...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. However, the term "litigation-" or "legal-" funding actually encompasses a handful of products, which vary based on borrower profile, stage and sector of litigation, use of proceeds, and ultimately, cost of capital and risk-reward profile. This webinar examines three funding products -- case fundings, law firm loans, and portfolio fundings -- and aims to inform attorneys on best solutions for their firms and clients, and provide an overview for institutional investors looking to allocate capital to litigations.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/a-menu-of-products-for-investors-and-lawyers-2021/
Single Asset Real Estate Cases (Series: Fairness Issues in Real Estate-Based ...Financial Poise
Anyone involved in the field of creditors rights on a matter involving an LLC that exists solely to hold the principal asset has surely seen the play where, the night before property is scheduled to be sold at a foreclosure auction, the debtor files bankruptcy. For those not familiar with the process, doing so invokes the “Automatic Stay”, which prohibits the secured lender from foreclosing on the property. The debtor then attempts to make their case to the court for reorganization.
But is failing to pay your mortgage really something bankruptcy was meant to solve? If the bank was going to agree to a loan modification, wouldn’t the parties have worked something out by the time the sheriff sale was set? The bankruptcy code recognizes this and therefore has a section devoted to dealing with this specific kind of bankruptcy—the Single Asset Real Estate (“SARE”) case. The goal of this episode is to look into ethical issues surrounding these matters.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/single-asset-real-estate-cases-2021/
Crowdfinance -101 (Series: Crypto, Crowdfunding & Other Crazy Concepts)Financial Poise
What is the “crowd” in Crowdfinance? What does the crowd thus buy and by what means and modes? And why should the crowd do this rather than put its money to work otherwise? What are the old (and continuing) modes for marketing and selling private securities? What is it like to purchase private securities from on-line portals? How are risks of fraud and mistake allocated there? Do on-line portals help get the rest of us in on unicorns in utero? How are equity securities purchased by the crowd turned into money? Is there a secondary market for private securities? Should ICOs be understood as crowdfinance by other means?
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/crowdfinance-101-2021/
A Menu of Products for Investors and Lawyers (Series: Commercial Litigation F...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. However, the term "litigation-" or "legal-" funding actually encompasses a handful of products, which vary based on borrower profile, stage and sector of litigation, use of proceeds, and ultimately, cost of capital and risk-reward profile. This webinar examines three funding products -- case fundings, law firm loans, and portfolio fundings -- and aims to inform attorneys on best solutions for their firms and clients, and provide an overview for institutional investors looking to allocate capital to litigations.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/a-menu-of-products-for-investors-and-lawyers-2020/
Valuing Lost Profits for Litigation Purposes (Series: Valuation)Financial Poise
A competitor, contractor or other third party has taken actions that have damaged your client’s business in the form of lost profits. How do you measure the lost profits? Must you demonstrate lost profits with certainty? Over what period do you measure the lost profits? If your client has not recovered fully, can you include estimated future lost profits? These are all important questions in a lost profits case. This webinar addresses those questions and summarizes the different methods to measure lost profits, as well as some of the critical elements that must be considered in developing and presenting your damages theory in court.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/valuing-lost-profits-for-litigation-purposes-2021/
An Introduction to a New Yet Old Funding Alternative (Series: Commercial Liti...Financial Poise
Litigation funding is an increasingly-popular tool for attorneys and clients to share the risk and reward of litigation with third-party investors, and for investors to capitalize on the uncorrelated returns generated by legal-driven revenue. This webinar is intended to provide an overview of the topic generally, touching on the “who,” “what,” “where,” “when,” “why” and “how’s” behind litigation funding.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/an-introduction-to-a-new-yet-old-funding-alternative-2020/
This document invites attendees to a shareholder protection and corporate governance forum taking place on January 30th, 2014 in Amsterdam. The forum will provide a critical update on collective, representative, and class action lawsuits in Europe and beyond. Attendees will hear from experts including the former CEO of Olympus on how stakeholders can achieve corporate governance reform. The event is designed for pension funds, institutional investors, asset management firms, and custodian banks. Registration can be completed by calling +44 (0) 20 7878 6888 or online at www.C5-Online.com/Shareholderprotection.
The presentation below examines some of the following topics:
Why should biotech companies look to sell rather than go public?
How (and why) to build your deal team
Legal matters, insurance planning and tax planning
Indemnification privisions and the advantages of doing it early on
Financial statement considerations
Corporate books and other items you will need
How to position your biotech company for a sale
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
M&A: Growth Strategy for International Companies in 2010Eliot Norman
The document discusses strategic considerations for mergers and acquisitions (M&A) and joint ventures. It covers topics such as defining an acquisition strategy, valuation issues, due diligence processes, financing options, cultural integration challenges, and post-acquisition risk management. Special issues for government contractors, cross-border deals, and tax implications are also addressed. Case studies are provided to illustrate successful M&A and joint venture deals.
The document discusses fiduciary duties and challenges following the Supreme Court's Dudenhoeffer decision. It summarizes various court cases that have addressed different types of ERISA stock drop claims. The document discusses claims based on publicly available information and whether "special circumstances" were adequately alleged. It also discusses pleading standards for claims based on inside information, examining what alternative actions plaintiffs must plausibly allege fiduciaries could have taken without doing more harm than good. The document provides examples from multiple circuit court cases.
This presentation by Professor Spencer Weber Waller, Loyola University Chicago School of Law, was made during the discussion on "Addressing competition challenges in financial markets" held at the 2017 Latin American and Caribbean Competition Forum (4-5 April 2017 – Managua, Nicaragua). More papers and presentations can be found at oe.cd/laccf.
Litigation Funding: Extending Access to Justice (Oliver Gayner and Noah Wortm...Noah Wortman
Litigation funding, over the years, has been established as an integral part of mainstream civil justice systems with a view to facilitating access to justice. Not only do litigation funders finance the cost of proceedings in exchange for a portion of the recovery, but they frequently function as coordinators amongst investor-claimants, provide access to legal resources, and (in some cases) underwrite the potentially significant risk of paying “adverse costs” (i.e., paying for the respondent’s legal bills in the event the claim is unsuccessful).
Current Trends in Leveraged Finance (Series: Leveraged Finance)Financial Poise
This webinar discusses recent trends in leveraged finance terms and practices. It covers changes to leveraged finance documents like successor LIBOR provisions and beneficial ownership requirements. It also discusses expansions in the ability to incur additional debt, designate unrestricted subsidiaries, and conduct asset sales. Finally, it explores evolving standards around financial covenants, acquisition conditionality, and the potential for a more portable capital structure. The panelists are experts on commercial finance deals and leveraged acquisitions representing major banks and borrowers.
Risk and Compliance Oct 2018 Adrià VázquezMorgan Jones
This document summarizes an interview with Adrià Vázquez, the regional TRI manager for Asia-Pacific at Tokio Marine HCC, about insuring cross-border M&A deals. Vázquez discusses the increasing but still emerging use of insurance like warranty and indemnity policies for deals in emerging markets. He notes the complex risks in these markets and how insurance can help mitigate risks and facilitate deals by resolving issues like unknown liabilities. Looking ahead, Vázquez expects continued rising demand for M&A insurance in emerging markets as the market matures and more players offer specialized coverage.
The document discusses developing a "Plan for Financial Comfort" with an experienced financial advisor. This plan would help coordinate one's financial affairs and manage complex life events by developing strategies across six areas: cash flow management, tax reduction, income preservation, retirement planning, college funding, and family protection. The goal is to significantly impact one's quality of life and family security through competent financial planning.
Case Solution for Kinross Gold Corporation: Accounting for Stock-based Compen...casesolutions12
This document advertises a case solution for the case "Kinross Gold Corporation: Accounting for Stock-based Compensation" by Darren Henderson and Christine Liu. It provides contact information for ordering the case solution and notes that solutions to cases from various publishers can be obtained by emailing the provided address. The document lists publishers whose cases solutions and analyses are offered.
This document provides contact information for Scott Krehl and specifies that the drawings and designs contained are the exclusive property of Paramount Community Development Corp. Unauthorized reproduction or modification of the plans without written consent is prohibited by law, though permission is granted to reproduce the plans for bidding and construction purposes on this particular project. The document also provides the project number and name, as well as details that it contains electrical details and penetration details.
This document contains a resume for Arghadeep Das, a civil engineering fresher. It summarizes his educational qualifications, including a B.Tech in Civil Engineering with 75% marks. It outlines his areas of expertise in engineering and personal skills. It also details his one month summer training with the Public Works Department and lists his extracurricular activities, achievements, certifications, references and personal details.
El documento describe el Movimiento SUN, una iniciativa global para acabar con la desnutrición. Reúne a gobiernos, organizaciones internacionales, donantes, empresas e investigadores para mejorar la nutrición de forma coordinada a través de enfoques multisectoriales. El movimiento apoya a países miembros en establecer plataformas multisectoriales para desarrollar e implementar estrategias nacionales que aborden las múltiples causas de la desnutrición y mejoren los resultados nutricionales.
This document summarizes and analyzes several types of documents, including factual writing, instruction manuals, leaflets, how-to guides, and factual journalism. For each document type, it examines elements like use of color, illustrations, conciseness of text, clarity, ambiguity, bias, register of language, and referencing of sources. The analysis considers how these elements are used effectively or could be improved for each document type. It provides insightful evaluations of design principles for instructional and informational documents.
El documento describe los 12 pasos del método de Abraham Moles para representar información, que van desde fórmulas algebraicas hasta modelos bio-tridimensionales. Los pasos incluyen esquemas de vectores, espacios complejos, formulación, anatomía, alto contraste y proyecciones realistas. El objetivo es simplificar información compleja de manera gradual.
In this edition of Valuation Insights we discuss several hot topics related to intellectual property, including a framework for evaluating whether to develop IP in-house or purchase through an acquisition (Build vs. Buy Decision). In our Technical Notes section we discuss how patent rights can be used to exclude competitors from practicing an invention or alternatively how to receive monetary compensation or injunctive relief in the Federal Courts. Finally, our international in focus article discusses the Internal Revenue Service’s proposed regulations to address the tax treatment by multinational corporations of certain asset and business transfers under Internal Revenue Code Sections 376(a) and (d).
Spotlight on Licensing - Avoiding and Limiting Risk in AgreementsMichael Annis
This document provides an overview of key considerations for negotiating licensing agreements to avoid and limit risks. It discusses preparing for negotiations by understanding the value of the licensed asset. Key licensing terms that should be addressed include scope, improvements, enforcement rights, representations, valuations, exclusivity, and bankruptcy. When negotiating, common pitfalls to avoid are having a winner-take-all attitude, focusing on price over other terms, and not understanding the other party's critical issues. Thorough preparation and balancing both parties' interests leads to stronger agreements.
As the Economy Closes Companies, Here’s a Patent Monetisation Primer - IAM Me...Erik Oliver
What do you do to monetise an IP portfolio when you don’t know where to start? That’s a question that patent portfolio managers might face when their executives want to know what the patent monetisation options are when a business winds down.
How to Move Your Startup Company to the U.S.ideatoipo
Recorded 6/20/23
Moving an international company to the U.S. can be a challenging process with many pitfalls.
This video is designed to help tech startups understand some of the legal decisions that need to be taken into consideration when expanding your company to the U.S.
The speakers discuss:
1. Why many startup founders want to bring their company to the U.S.
2. When is a good time to start the process?
3. What is an appropriate legal structure for U.S. operations or funding in the U.S.?
4. What are the typical rounds of raising capital in the U.S.?
5. What are the most common mistakes founders make during the early stages of their startup (taxation, IP, immigration, insurance, compliance)?
About the Speakers:
Svetlana Kamyshanskaya, the founder of Primum Law Group, is a global citizen with the legal, operational, and project management expertise to chart a successful course for expanding inbound tech companies and startups. Svetlana works with entrepreneurs and executives at all stages of development. She has personalized her clients’ road maps for bringing their business to the U.S.
Elina Firsava is a corporate attorney at Primum Law Group where her practice focuses on helping international and domestic companies to incorporate and develop their business in the United States. She assists startups with their general corporate matters, including entity formation and reorganization.
This document summarizes key points from a presentation on trademark protection. It discusses what trademarks are, how to select protectable trademarks, the importance of trademark clearance searches, and steps to establish and protect valuable trademark assets, including trademark filings, policing trademarks, and addressing infringement risks. The presentation aims to help businesses understand how to effectively use trademark laws to protect their brands and business assets.
Licensing is a contractual arrangement where a licensor allows a licensee to use their technology, patents, trademarks, designs, processes, know-how, or intellectual property for a fee. It differs from a government license. Franchising is a type of licensing where the licensor licenses a complete business plan to the licensee while maintaining control over standards. Reasons for licensing from the licensor's perspective include lacking resources to directly exploit a market, testing a new market, monetizing an invention, addressing small market sizes, and avoiding political risks. However, licensors must be cautious of licensees becoming competitors or further developing the technology. The licensee benefits from getting access to intellectual property quickly, cheaply, and
Licensing is a contractual arrangement where a licensor allows a licensee to use their technology, patents, trademarks, designs, processes, know-how, or intellectual property for a fee. It differs from a government license. Franchising is a type of licensing where the licensor licenses a complete business plan to the licensee while maintaining control over standards. Reasons for licensing from the licensor's perspective include lacking resources to directly exploit a market, testing a new market, monetizing an invention, addressing small market sizes, and avoiding political risks. However, licensors must be cautious of licensees becoming competitors or further developing the technology. The licensee benefits from getting access to intellectual property quickly, cheaply, and
How to Move Your Startup Company to the U.S.ideatoipo
Presented August 23, 2023
Moving an international company to the U.S. can be a challenging process with many pitfalls.
This webinar is designed to help tech startups understand some of the legal decisions that need to be taken into consideration when expanding your company to the U.S.
The speakers will discuss:
1. Why many startup founders want to bring their company to the U.S.
2. When it is a good time to start the process?
3. What is an appropriate legal structure for U.S. operations or funding in the U.S.?
4. What are the typical rounds of raising capital in the U.S.?
5. What are the most common mistakes founders make during the early stages of their startup (taxation, IP, immigration, insurances, compliances)?
There are several strategies for entering foreign markets, including direct exporting, licensing, franchising, partnering, joint ventures, buying an existing company, piggybacking, turnkey projects, and greenfield investments. Each strategy has advantages and disadvantages depending on factors like tariffs, required product adaptation, costs, and regulations. Partnering and joint ventures allow sharing of risks, resources, and local knowledge but can also create competition if not structured properly. Turnkey projects provide a complete solution for complex infrastructure projects but local subcontracting opportunities. Greenfield investments require the most involvement but may be necessary due to various market factors.
Strategic Counter-Assertion Model - Richardson Oliver Law Group - IAM #72 Jul...Kent Richardson
This document discusses developing a strategic patent portfolio to mitigate risks from potential patent asserters. It involves:
1) Identifying sources of patent risk, including competitors, customers, suppliers within the ecosystem and large corporate patent asserters.
2) Assessing risks by estimating potential costs of disputes with asserters, likelihood of assertions, and expected annual costs.
3) Calculating how much a company should invest in its patent portfolio annually to reduce risks to a sustainable level based on expected costs. The approach aims to develop a portfolio that deters threats and reduces licensing fees.
The Strategic Counter-Assertion Model for Patent Portfolio ROIErik Oliver
Targeting the revenues of other companies according to the patent assertion risk they present effectively defines your patent development and external acquisition strategies. We show how to build a financial model to determine where you spend your patent development and buying dollars and then how to calculate risk and ROI.
Effective legal representation of innovators and inventors requires careful thought and consideration. Among other things, care must be taken to properly initiate communications, prepare assignments, and handle subsequent legal disputes. This webinar discusses common legal issues that often arise during the representation of innovators and inventors. It also includes valuable advice from both innovators/inventors and the IP attorneys who represent them.
Part of the webinar series: INTELLECTUAL PROPERTY 201 - 2022
See more at https://www.financialpoise.com/webinars/
Third Parties Involved in the Litigation Finance IndustryFinancial Poise
This document provides an overview of a webinar on third parties involved in the litigation finance industry. It introduces the concept of litigation funding and notes that it allows parties to share litigation risks and rewards with investors. The webinar will discuss the different players in the litigation finance ecosystem, including litigation finance firms, brokers, experts, law firms and insurance brokers. It will explain how these third parties can assist clients and facilitate financing arrangements.
frenchizing and licensing ffffffffffffffffffffffSENAMKHAN1
This document discusses licensing and franchising as contractual strategies for international business. It defines licensing as an arrangement where an intellectual property owner grants another firm rights to use that property in exchange for royalties. Franchising allows another firm to use an entire business system in exchange for fees. The document outlines the advantages of these strategies, including moderate control, exchange of intangibles, flexibility, and mitigated liability. It also discusses the management of licensing and franchising agreements.
Breakout Session: Head for the Exit: How to Structure, Negotiate & Close the ...Healthegy
Presentation by McDermott Will & Emery at Medtech Conference 2016.
Participant:
Kristian Werling, Partner – McDermott Will & Emery, LLP
Powered by:
Healthegy
For more healthcare innovation
Visit us at Healthegy.com
Click here to agree managing intellectual property when crowdsourcing solutionsIan McCarthy
Tapping into the creativity of a crowd can provide a highly efficient and effective means of acquiring ideas, work, and content to solve problems. But crowdsourcing solutions can also come with risks, including the legal risks associated with intellectual property. Therefore, we raise and address a two-part question: Why -- and how -- should organizations deal with intellectual property issues when engaging in the crowdsourcing of solutions? The answers lie in understanding the approaches for acquiring sufficient intellectual property from a crowd and limiting the risks of using that intellectual property. Herein, we discuss the hazards of not considering these legal issues and explain how managers can use appropriate terms and conditions to balance and mitigate the risks associated with soliciting solutions from a crowd. Based on differences in how organizations acquire intellectual property and limit associated risks, we identify and illustrate with examples four approaches for managing intellectual property (passive, possessive, persuasive, and prudent) when crowdsourcing solutions. We conclude with recommendations for how organizations should use and tailor the approaches in our framework to source intellectual property from a crowd.
VG - Multi Jurisdictional Litigation - 28.04.2015 -FVikas Goyal
This document discusses trends in multi-jurisdictional litigation based on a survey. It finds that the most common cross-border disputes involve the US, UK, Germany and China and occur in contract, tort and IP law. Managing these disputes is challenging due to differences in legal systems and coordinating counsel across jurisdictions. Effective management requires early assessment, cooperation between defendants, and coordination of public relations and communications strategies.
The document provides guidance on devising international patent litigation strategies. It discusses defining goals for litigation, understanding the tools available, where to deploy those tools based on jurisdictional factors, and executing a coordinated global campaign. Specifically, it emphasizes the importance of thoroughly understanding local laws and customs in different jurisdictions, developing a comprehensive budget, maintaining a consistent narrative, and knowing when objectives have been achieved or when to change strategies. Managing litigation across multiple countries introduces challenges from legal differences, cultural factors, time zones, and ensuring consistent coordination.
This document summarizes a legal case regarding copyright of reconstructed ancient texts. Specifically, it discusses a 1992 case in Israel where Professor Elisha Qimron sued the publishers of a book containing photographs of the Dead Sea Scrolls for including a reconstruction of the "MMT" text that Qimron had compiled. The court found that Qimron's reconstruction was eligible for copyright protection. However, the document argues the court did not properly consider whether a scholarly reconstruction can truly be considered an original work or whether its ruling might hinder academic freedom. It also questions the court's presumption that other legal systems like the US provide the same "moral rights" protections as Israeli law.
This document summarizes the history and theories behind corporations and limited liability companies (LLCs) and discusses how courts and legislatures should articulate rules around piercing the veil, fiduciary responsibility, and securities regulation for LLCs. It argues that LLCs have the potential to replace corporations as the preferred business entity structure. However, the document asserts that Delaware LLC law has swung too far toward an extreme contractarian position in making LLC veil piercing almost impossible, and that courts will feel pressure to develop LLC piercing standards similar to those for corporations. It maintains this is appropriate given that LLCs typically involve smaller entities for which unlimited liability may be more efficient.
This summary provides the essential information from the document in 3 sentences:
The document discusses a hypothetical situation where an inventor obtains patents in multiple countries including a European patent, but then discovers that courts in different European countries can come to different conclusions on patent infringement cases. It describes how this actually occurred with a company called Improver that sued Remington for patent infringement - the German courts found infringement while the English courts did not. The document argues that true legal integration within Europe is difficult to achieve because different legal systems and traditions can result in different interpretations of laws like the European Patent Convention, despite legislative efforts at harmonization.
This document summarizes the challenges faced by owners of standard-essential patents in enforcing their patents and obtaining fair compensation. It discusses how the inability to obtain injunctions in certain jurisdictions like the US, along with low damages awards, has led to widespread "patent hold-out" where companies use patented technology without licenses. The document reviews approaches to standard-essential patent enforcement across different countries and regions, noting more patentee-friendly approaches in Europe, Brazil, India and other forums compared to the US. It provides recommendations for standard-essential patent owners to maximize enforcement, including pursuing litigation in multiple jurisdictions, complying with any applicable FRAND licensing rules, and making license offers before seeking injunctions.
1. Devising international patent litigation strategies
David L Cohen and Jonathan Kraft
FORM Holdings Corp
Yearbook
Building IP value in the 21st century
2017
Devising international patent litigation strategies
David L Cohen and Jonathan Kraft
FORM Holdings Corp
2. Lerner, David, Littenberg, Krumholz & Mentlik, LLP
INTELLECTUAL PROPERTY LAW
600 South Avenue West Westfield, NJ 07090 908-654-5000 www.lernerdavid.com
> Patent and Trademark Procurement
> Risk Assessment and Management
> Litigation
> M&A IP Due Diligence
> Post-Grant Proceedings
> Licensing
Experience Matters...
When Navigating the Intersection
of Law, Technology and Business.
3. IAM Yearbook 2017
www.IAM-media.com
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FORM Holdings Corp | International
By David L Cohen and Jonathan Kraft, FORM Holdings Corp
Patent holders have many reasons to assert their
patents in litigation, including maintaining market
exclusivity, receiving royalties and disrupting their
competitors. Global patent litigation has rightly been
called the ‘sport of kings’ – the rewards can be great,
but the legal costs alone can exceed a small fortune.
Patent holders face increased challenges when
asserting their rights, but a global approach can lead
to a lucrative resolution. That said, it is now more
important than ever to develop a comprehensive plan
carefully and strategically. Think through your strategy
before embarking on a costly international campaign.
Single-patent, single-jurisdiction patent litigation is
hard enough to predict; when scaled up to include
multiple patents in different jurisdictions, it becomes
key to define success, develop an exit strategy if things
go poorly and – most importantly – craft a timeline
for when to declare victory and move on.
Define your goals
It is essential to consider the reasons for asserting
your patents and the implications of doing so.
Stopping competition
Seeking to restrain competition can trigger a host of
legal concerns, potentially violating anti-competition
laws or attracting regulatory scrutiny. In certain
countries, obtaining injunctions has become difficult.
Further, enforcing the protection of a functionality
may backfire if that functionality can be designed
around or if doing so pushes competitors to develop
another approach to solving the problem.
Royalties
If you wish to receive royalties, consider the rule
on the size of royalties in each jurisdiction. Patent
awards in the United States are generally higher
than those elsewhere. Additionally, understand
the connection between the geographies of your
patents and the target’s business and supply chain.
Owning an infringed patent is just half the battle; a
royalty rate is worthless without a base. In addition,
if exhaustion exists, recovery may be limited.
Disruption
Causing even temporary disruption to competitors
entails legal, financial, operational and reputational risk
– even if the type of relief you seek is allowed under
the law of a particular jurisdiction. Your adversary
may file counterclaims or other legal actions against
you and government bodies may launch regulatory
investigations. This will cost money – sometimes a lot
of money. However, such risks may be outweighed
by the benefits: threats to your adversary’s supply
chain, fear to its customers, an increased cost of
doing business in a particular jurisdiction, distraction
to its executives or tarnishing of its public image.
Willingness to litigate
If you want to show a willingness to litigate,
consider how far you are willing to litigate. Do
you have what it takes (ie, the time, personnel,
authority and – most importantly – financial
resources) to litigate to the end?
Look to the endgame
Each patent holder has its own reasons for having
developed or acquired its patents and, similarly, will
have unique goals for a monetisation campaign.
What is ‘complete success’?
When is the right time to cash in your winnings
and profit? It is essential to consider what victory
means before starting a monetisation campaign.
Devisinginternational
patentlitigationstrategies
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International | FORM Holdings Corp
How long will you give yourself to win?
A carefully crafted strategy does not always go
to plan. Resilience and flexibility are essential,
but changes to the landscape – legal, political,
business, economic or otherwise – may hamper
your efforts. How much time will you allow to
elapse before you think about changing your goals?
What is your strategy if you fail to achieve your
goals quickly?
Do you have a contingency plan? Have you briefed
your stakeholders adequately about possible mid-
campaign changes in strategy? If you change your
strategy, will that affect others’ perception of your
company? In an industry where image matters a
great deal, it is important to balance maximising
potential recovery with saving face if circumstances
go south.
Understanding the tools at your disposal
After evaluating strategic considerations, turn to
the tools at your disposal.
What are the means authorised to achieve your
goals?
At the end of the day, you are only as strong as
your wallet. Whether the money comes from
your company, investors, litigation financers or
another source, it is essential that you demonstrate
the value proposition to maximise your potential
resources. Once you have ascertained what those
resources are, you can better understand the tools
at your disposal.
What tangible tools do you have?
Presumably, in a global monetisation campaign,
the patent holder will choose to assert a certain
number of patents; strategically choosing the best
patents to assert is essential for success. Certain
good patents may be off-limits for assertion
(eg, they may be too valuable to put at risk or
there may be regulatory concerns, encumbrances
or exhaustion concerns). You should also
consider whether your portfolio contains open
applications, which may offer flexibility to amend
claims, including opportunities for reissues,
central amendments or other mechanisms.
Other types of intellectual property – including
copyright, trademarks and trade secrets – may
also be asserted against the target. In addition,
any contractual relationship you may have
with the target of your campaign may provide
additional support (eg, breach of a non-disclosure
agreement).
What intangible tools do you have?
Judges and juries are not immune to public
opinion; a sympathetic plaintiff has a better
chance of winning on the merits. Crafting a
compelling story is essential to a successful global
monetisation campaign. A patent holder must ask
itself why it deserves money or relief and why the
target must pay (a blameworthy defendant can be
as powerful a narrative as a sympathetic plaintiff).
Each narrative is different, but certain themes are
ubiquitous, such as the patent holder that was a
pioneer in the field, fell on hard times or had its
intellectual property stolen (especially by a foreign
company or government). The key question is
how the story behind your intellectual property
relates to the target. Controlling the narrative is
important, as your adversary will try to poke holes
in your story; thus, it is essential to keep your
narrative consistent over time (and even bolster it,
if possible).
What interpersonal tools do you have?
Any shared connections with your adversary will
prove invaluable as you execute your campaign.
The connections (business, political, personal
or otherwise) need not relate directly to the
campaign, but any way to explore resolution
outside of official channels will prove to be an
asset as both parties dig in their heels for a long
fight.
Where should you deploy your tools?
In planning a global campaign, you will have to
consider in which countries to assert your patent
portfolio. The available choices will depend on the
geographies of the patents in your portfolio. This
determination depends on many factors, including:
• the locus of infringement;
• which jurisdictions are friendlier to patent
infringement lawsuits;
• where preliminary relief is available;
• where you have pre-existing relationships with
local counsel;
• whether there are local anti-competition
concerns; and
• what relief is likely to be granted.
Matching goals with jurisdictional tools
Possibly the greatest challenge of successfully
executing a global monetisation campaign is
gaining a thorough understanding of local laws
and customs. Securing good local counsel is half
the battle, as no one can pretend to be an expert
in every country’s legal system. You must carefully
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FORM Holdings Corp | International
study how successful patent infringement lawsuits
are won in each jurisdiction if you wish to achieve
the same success.
Important considerations include the following.
Preliminary relief
Are injunctions, border seizures, raids or other
procedural mechanisms available to a patent
holder before trial? What are the requirements
for obtaining such relief? What are the costs
of obtaining relief and enforcing it? Can the
adverse party file countermeasures? If affected
by the preliminary relief mechanisms, can third
parties (eg, customers) file countermeasures? Is
there detriment – whether judicial, regulatory,
reputational or otherwise – to using such
preliminary relief mechanisms?
Costs
Apart from the obvious consideration of local
attorneys’ fees and court filing fees in each
jurisdiction, it is important to consider whether
there will be any extra costs for executing in each
jurisdiction:
• Will you have to pay enforcement fees on the
finding of preliminary or permanent relief?
• Is it necessary to pay some type of bond to the
court?
• Will you have to engage technical experts?
• Will you have to travel to the jurisdiction often
(or pay for others to do so)?
It is also essential to consider the type of law in
each jurisdiction and develop a budget based on
when and how certain events occur (eg, briefing in
David L Cohen
Chief legal and IP officer
dcohen@formholdings.com
David L Cohen is the chief legal and IP officer and
corporate secretary at FORM Holdings Corp (formerly
Vringo Inc). Previously, he was senior litigation
counsel at Nokia, in private practice at Lerner David
and Skadden Arps and a law clerk for Chief Judge
Gregory W Carman of the Court of International Trade.
Mr Cohen earned a BA and MA from Johns Hopkins
University, an MPhil from Cambridge University, an
MA (with distinction) from University College London
and a JD (cum laude) from Northwestern University
School of Law, where he was an associate editor of
the Law Review. He received the Sara Norton prize
from Cambridge University and the First Prize in
Lowden-Wigmore Prizes for Legal Scholarship from
Northwestern University.
Jonathan Kraft
Counsel
jkraft@formholdings.com
Jonathan Kraft is counsel at FORM Holdings Corp
(formerly Vringo Inc), where he assists FORM
Holdings’ worldwide efforts in IP development and
monetisation.
Before practising law, Mr Kraft earned a BA in
political communication from George Washington
University and a JD from Fordham University
School of Law, where he was a staff member on
the Fordham Environmental Law Journal. Before
attending law school, Mr Kraft worked in marketing
for the Washington Nationals baseball team, writing
numerous articles which were published in the team’s
publications.
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International | FORM Holdings Corp
a civil law country is vastly different from briefing
in a common law one).
Proof requirements
Evidentiary requirements differ by jurisdiction and
type of law. It is essential to consider whether and
to what extent a jurisdiction provides for discovery.
What may be practical in certain jurisdictions may
be cost-prohibitive in others.
Time to end results
Developing a litigation timeline in each
jurisdiction is essential when planning a global
monetisation campaign. By mapping those
timelines together, you can piece together when
pressure points may develop around the world,
which may in turn dictate when to file suit in
certain jurisdictions. It is also essential to give
stakeholders a sense of when they are likely to see
a return on their investments.
Patent working and local business requirements
Certain jurisdictions have requirements that an
asserted patent is being worked in that jurisdiction
and not simply being held for the purpose of
litigation.
Right to sue
In certain jurisdictions, before a plaintiff can file
suit, it must take great logistical pains to prove
that it has the authority to do so. Although this
can be rather annoying, focusing on this at the
beginning will ensure that procedural concerns do
not prejudice your strategy later on.
Executing a global campaign – together
You have done your homework – now you need to
put it all together to execute a coordinated, global
campaign. Managing a series of litigations in
disparate jurisdictions around the world presents
a unique series of challenges – some readily
apparent, others more subtle.
No two legal systems are completely alike
Even if you consider yourself an expert in
comparative law, managing a global monetisation
campaign will provide a robust education in the
intricacies of legal systems around the world.
Your narrative should stay consistent
Although each lawsuit will take a different form,
making sure that your story is the common thread
that unites each litigation will ensure consistency
and strengthen your case.
What happens in one country may influence
what happens in another
Some jurisdictions – especially those with similar
legal systems or legal systems that developed from
the same body of law – may apply a legal ruling
from another jurisdiction involving the same
parties and issues as precedent, or at least treat
it as highly dispositive. You must take care to
consider how your cases interact with one another,
especially when the validity of the patents in suit
has been challenged.
Cross-cultural differences are real and can be
challenging to overcome
In a globalised world, it can be shocking how
deeply certain cross-cultural differences remain.
In certain countries you will be treated with the
utmost respect and service, while in others your
attorney will expect that you treat him or her with
reverence. Sometimes, your local counsel will
answer an email within minutes – in the middle
of their night. Other times, it will take days (and
multiple follow-up requests) to gain his or her
attention. In certain jurisdictions attorneys view
themselves as subservient to the courts, with client
service a distant priority. While many local counsel
take pains to cater to international clients, you will
notice differences. In addition, be mindful of local
customs (eg, holidays, labour laws and current
events) that may cause delay.
The world is (still) a big place
Notwithstanding cultural differences, time zone
differences present a challenge when engaging
in a global monetisation campaign. Certain
“Possibly the greatest challenge of successfully executing a global
monetisation campaign is gaining a thorough understanding of
local laws and customs”
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FORM Holdings Corp | International
jurisdictions will present challenges when
attempting to find a mutually convenient time
to communicate. Expect plenty of late-night and
early-morning conference calls and be prepared
for day-long lapses in communication. Engaging
a regional coordinating counsel who can serve as
your liaison on the other side of the world can help
to mitigate this issue.
Frequent-flier miles will be your friend
It is one thing to communicate with local counsel
on the phone or via email, but quite another to
meet with them on the ground, on their home
turf. Travelling to each jurisdiction in which you
are litigating builds trust, helps to avoid errors
in translation (even if everyone speaks the same
language, different customs can lead to differing
interpretations) and ensures that the entire team
is on the same page. In certain jurisdictions it is
essential that the client is present during hearings,
even preliminary hearings, so ask local counsel
when you will actually have to be present.
Develop a budget early (and update it often)
It cannot be stressed enough how important it is to
develop a comprehensive budget as early as possible.
Ideally, the budget will imagine every possible
scenario and provide multiple contingencies so as
to remain flexible in the face of uncertainty – this is
litigation, after all. As the case progresses, be sure
to request updated budgets regularly. This will not
only ensure that you can keep your stakeholders
updated (they will ask), but also establish the
principle that keeping costs in check is important
(otherwise, fees will run wild and you will find
yourself in an uncomfortable place).
Knowing when you’ve won and when it’s time to
move on
Now that you have completed the thorough
diligence, comprehensive planning and seamless
execution required of your global monetisation
campaign, what comes next? If all has gone
well, you will have to decide when to enter into
a settlement agreement. This decision will be
based on many factors, including your adversary’s
willingness to settle patent infringement lawsuits,
your litigation track record, your stakeholders’
patience and wallets and the global patent licence
climate. Determining when to call it a day or when
to double down and try for a larger return on your
investment is complicated.
Even more difficult, if your campaign has
not progressed as anticipated, is knowing when
to cut your losses and stop the bleeding. You
must consider what your adversary – which you
have likely caused financial, commercial and
reputational pain – will be willing to pay to put
matters to rest, or whether it will look to be
compensated for its loss. You will have to consider
the financial, commercial and reputational risk
to your employer, your stakeholders and yourself.
Although no one likes to quit, there are times
when walking away with something (or at least,
more than nothing) is a partial victory in itself.
FORM Holdings Corp
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