What Happens When Your License Agreement Goes to Litigation? The Perils of Imprecise Drafting
and/or Drafting For Experts
Thursday, February 21, 2019
Mitchell Park Community Center, Palo Alto
11:30 a.m. – 12:30 p.m. – Registration & Networking Lunch
12:30 p.m. – 2:00 p.m. – Program
Joseph Yang, a tech/IP transactional partner at PatentEsque Law Group LLP, conducted and will present the results of an extensive study of license agreements that ended up in litigation in 2017-2018. His study identified two major situations common to all of the disputes: (1) imprecise drafting (e.g., arising from not knowing the relevant law, and/or from poor wordsmithing); and (2) drafting for licensing peers/experts (e.g., failing to recognize that judges and juries typically lack IP licensing sophistication). Joe will review what happened when the agreements went to litigation, including the factual scenarios and corresponding contract clauses that were at issue … and share practice tips for avoiding similar problems in everyday licensing deals.
As a special feature, Shirish Gupta, a JAMS neutral who often arbitrates technology/IP contract disputes, will respond to Joe’s presentation in real-time, presenting a complementary perspective from a seasoned arbitrator. 1.5 MCLE credits available.
Joseph Yang is a partner at PatentEsque Law Group, LLP where he specializes in technology/patent transactions and strategic partnerships. He has led hundreds of deals worth billions of dollars, for IT, electronics, entertainment, consumer goods, healthcare, manufacturing & energy clients, especially cross-industry (e.g., JVs, SaaS, IoT, cloud and “big data” deals). He is also an expert witness for high-stakes IP litigation, including having served as a licensing expert for one of the highest value pharmaceutical licensing disputes in recent years. Joe teaches “Technology & Patent Licensing” course at Stanford Law School, and is a chair of PLI’s “Advanced Licensing” and “Advanced Patent Licensing” seminars. Joe was formerly General Counsel of Cryptography Research, and handled its IP licensing (10+ billion devices/year) and eventual M&A ($400M+). Earlier, Joe co-founded and later led the “IP Strategy & Transactions” practice at Skadden, Arps (Palo Alto). Intellectual Asset Management (IAM) publications has named Joe one of the “World’s Leading IP Strategists” and “World’s Leading Patent Professionals.” IAM lists Joe as 1 of 10 “highly recommended” transactional attorneys in California (and the only one from a boutique firm), calling him a “major-league deal maker and licensing authority,” and a “transactional mastermind.” Joe is also profiled in various Marquis Who’s Who publications. He holds a J.D. (Stanford) and Ph.D. (Caltech, engineering).
Shirish Gupta brings to JAMS several years of experience as a successful neutral, as well as a decade and a half of experience as a litigator at top law firms and as a solo practitioner. Shirish is known for his legal acumen and economic prowess, which makes him particularly adept at diving into complex financial/technical disputes, including patents, securities and accounting, and class actions. Shirish has successfully settled numerous cases and is sought out by Silicon Valley startups, as well as Fortune 500 companies. In 2014, The Recorder conducted an extensive survey of Bay Area Attorneys and named Shirish the Best Independent Mediator. In 2013, Shirish’s mediation skills were recognized when he was recruited to mediate Superstorm Sandy insurance coverage claims in New York. At the peak, he was mediating and resolving four claims per day. Shirish is an Adjunct Professor at UC Hastings, where he teaches Negotiation. Shirish serves as Co-Chair of the California State Bar Council of Sections and is a past chair of the State Bar Solo and Small Firm Section Executive Committee.
CLE: 1.5 hours CLE available.