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License Executive Society USA & Canada

Trends in Securing and Enforcing Trade Secrets

  • 19 May 2021
  • 12:00 PM - 1:30 PM
  • Webinar

LES Webinar:
Trends in Securing and Enforcing Trade Secrets

Hosted by the Silicon Valley Chapter

Wednesday, May 19, 2021 
12:00 p.m. – 1:30 p.m. (PST)


The Licensing Executive Society Silicon Valley Chapter is pleased to present this program in which leading experts will provide insight on trade secrets as companies face mounting challenges of managing and licensing their Intellectual Capital. These challenges include unprecedented workforce mobility/technology usage and related trade secret misappropriation, evolving IP laws, as well as new options to manage and license trade secrets and fund litigation to secure trade secret rights.

The program will showcase the findings of Stout's newly released “Trends in Trade Secrets Litigation Report 2020,” which covers trade secret litigation trends across the types of trade secrets, industries, jurisdictions, damages, licensing, and companies. Registrants will be provided with a copy of the report prior to the webinar for review and to have questions ready.

Our expert panel will further explore and translate the various aspects of managing, licensing, and securing trade secret rights, including:

  • Impact of the Defend Trade Secrets Act of 2016 (DTSA) and its influence on how businesses protect their intellectual property, a key type of Intellectual Capital
  • Securing an injunction for trade secret misappropriation
  • The corporate view and best management practices for trade secret protection and licensing
  • Trade secret litigation from the point of view of funders and companies/attorneys seeking funding, examining various options that are available:
    • Trade secret cases most suitable for litigation
    • Typical litigation funding deal structures
    • Process details and how long it could take
    • Other important considerations/lessons learned

Moderator: Michael Pierantozzi, Principal/Owner, Andiamo Associates, LLC
Neil Eisgruber, Director, Disputes, Compliance, & Investigations, Stout
Author, Trade Secrets Report, Trends in Trade Secret Litigation Report 2020, Stout
Jeremy Elman, Counsel, White & Case LLP
Michael Kallus, Senior Investment Manager, Woodsford Litigation Funding
Deanna Kwong, Senior IP Litigation Counsel, Hewlett Packard Enterprise
Mitch Rosenfeld, Managing Director, Intellectual Property Advisory & Transactions, Stout

Panel Bios:
Moderator: Michael Pierantozzi, Principal/Founder, Andiamo Associates, LLC
Based in Silicon Valley, Michael is a technology and intellectual property (Tech/IP) entrepreneur, strategist and transaction expert. Andiamo Associates is a management consulting firm that specializes in Tech/IP business catalyzing and monetizing matters. Previously, Michael was responsible for strategic business development, including sales, acquisitions and licensing for the IP Licensing group at Hewlett Packard Enterprise (HPE). Previously, Michael held executive leadership positions at Hewlett-Packard Company (HP) including Hewlett-Packard Enterprise (HPE), Intellectual Ventures (IV), and IPotential, and was co-founder and COO for an IP data services startup focused on providing transparency in IP transactions. Since 2009, Michael has been recognized by Intellectual Asset Management (IAM) Magazine in their IAM 300 rankings as one of the “World’s Leading Intellectual Property Strategists”. He is a frequent speaker at Tech/IP industry events in the US, Europe and Asia, and has delivered IP management seminars at Stanford University.

Neil Eisgruber, Director, Disputes, Compliance, & Investigations, Stout; Author, Trade Secrets Report, Trends in Trade Secret Litigation Report 2020, Stout
Neil has provided dispute advisory services focusing on intellectual property in both dispute and valuation contexts. He has been actively involved in providing a broad range of financial advice to trial lawyers throughout the dispute process, including matters involving patent infringement, trademark infringement, misappropriation of trade secrets, breach of contract, and forensic accounting. He has 10 years of experience providing consulting and litigation support services, including expert testimony, to clients ranging from small businesses to multi-national companies and law firms. His experience includes assisting clients through provision of damages analysis, valuation analysis, forensic analysis, industry and technical research, and analysis of large, complex data sets. Neil manages all aspects of the valuation and/or damages calculation process. His prior experience includes the analysis software and creation trial demonstratives in support of trade secret misappropriation claims and performing computer forensic evidence collection and analysis at SunBlock Systems. In addition, he has experience as a software engineer at IMAKE Software and Services, where he designed, created, tested, and supported software products used in the distribution of digital media.

Jeremy Elman, Counsel, White & Case LLP
Jeremy is an IP trial lawyer with nearly two decades of experience on behalf of leading multinational companies in need of sophistic litigation and IP strategies, from the Fortune 1 to fast-growing startups in and outside Silicon Valley. His client roster has included some of the world's most recognizable companies, such as Walmart, Apple, Samsung, Coca-Cola, Nike, and the Hard Rock Café. Jeremy has tried cases around the country in nearly 100 different IP disputes involving virtually every type of technology. Jeremy is also a leading authority on various types of high-tech litigation such as trade secrets and the anti-circumvention provisions of Section 1201 of the Digital Millennium Copyright Act (DMCA). He is leading a team that was recently named runners-up for Litigator of the Week by the American Lawyer for scoring the first trade secret preliminary injunction against a competitor in the Northern District of California in nearly two years on behalf of his client Carl Zeiss Meditec, Inc.

Michael Kallus, Senior Investment Manager, Woodsford Litigation Funding
Michael has a background in complex IP litigation and finance. He joined Woodsford from international alternative investment manager Fortress Investment Group. As Vice President, beginning in 2015, Michael worked in every aspect of the IP finance group–sourcing IP backed litigation finance, debt and private equity investment opportunities, maintaining relationships with domestic and foreign law firms and claims owners, aiding in asset valuations, directing drafting of transactional documents and managing investments post financing. Michael’s investment focus was patents, copyrights, trade secrets and ANDAs. Prior to Fortress, Michael spent five years at patent risk mitigation company, RPX Corporation. As a director, Michael maintained close relationships with in-house legal teams, tracking and analyzing patent risk facing their companies and negotiated litigation buy outs with plaintiff’s counsel of claims on behalf of RPX clients.

Deanna Kwong, Senior IP Litigation Counsel, Hewlett Packard Enterprise
Deanna’s team is responsible for managing all IP-related litigation disputes globally.  At HPE, she is also Global Co-Chair of the Pro Bono Committee for the Office of Operations, Legal, and Administrative Affairs (OLAA) and Programs Co-Chair for the HPE Americas Women’s Network, and also serves on the CEO’s Executive I&D Council.  In 2020, Deanna was honored with the HPE Women’s Excellence Award.  In her spare time, she enjoys training for and running marathons and ultramarathons.

Mitch Rosenfeld, Managing Director, Intellectual Property Advisory & Transactions, Stout
Mitch has over 30 years of patent experience representing clients ranging from Fortune 50 companies to Silicon Valley startups, with an emphasis on litigation, portfolio evaluation, complex licensing and sales transactions, and development and implementation of patent licensing campaigns. During his career he has transacted hundreds of millions of dollars in IP assets. He has been involved in every stage of the patent process, from initial invention to patent prosecution, to exercising patent rights through licensing, sale, and litigation. Prior to joining Stout, Mitch was head of the strategic advisory practice and analytics team within the Tech+IP group at Houlihan Lokey. He has been named by Intellectual Asset Management magazine to the “IAM 300” – The World’s 300 Leading Intellectual Property Strategists every year since 2011.

LES-SVC CLE: 1.5 hours MCLE credit available.

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