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Patents and the Business Proposition of IP

  • 02 Feb 2016
  • 6:30 PM - 9:45 PM
  • Constant Contact, 1601 Trapelo Rd., 1st Floor Great Room, Waltham (Exit 28, I-95/Route 128)

Entrepreneurs and investors are increasingly viewing patents with some skepticism. Some Investors say that they are unwilling to fund building out a strong patent portfolio because if the business is successful, they can buy whatever patents they need. They would rather their early investments be devoted to building and launching the minimum viable product, gaining customers, and ramping revenue. Facebook is one example they point to. Other investors say that they will not invest in a startup that does not have the potential to create a significant patent portfolio that can serve as a barrier to future competitors and, should the startup fail, provide some value at the end. Google is often cited as an example of a company that had patents early and has built a healthy portfolio. All these conversations are taking place against a backdrop of diminishing patent value generally, and particularly the value of software, payment, and business methods patents. Some of these changes result from various court decisions. Other changes have been brought by the American Invents Act (AIA); these changes make it much more difficult to enforce patents of all kinds in the US. A new administrative procedure called Inter Partes Review (IPR) makes it very cost effective to challenge most issued patents at the US Patent and Trademark Office. So what is an entrepreneur to think and do? Tonight’s panel of experts will address these and many other issues from both the business and legal perspectives.

Panel:

Stephen Y. Chow, Esq., Partner, Burns & Levinson, LLP

Over three decades of practice, Attorney Stephen Y. Chow has developed numerous patent portfolios and strategies for chemical, electrical, information technology and life sciences enterprises, litigated patent, copyright, trademark, trade secret, antitrust, unfair competition, international trade, telecommunications and e-commerce cases before state and federal courts and agencies. Mr. Chow has coordinated or served as an expert in litigation before foreign tribunals. He has also advised manufacturers, telecommunications carriers, commercial exchanges and educational, financial and research institutions on commercial, legislative and regulatory matters, particularly in internal policies and development of new services and products, as well as in early-stage financing. Mr. Chow sees himself as a strategist and trouble-shooter for technology companies in financial, governance and intellectual property disputes and development. In particular, he offers integrated patent, technology and business prosecution, assessment and enforcement with the commensurate benefits.

Since 1995, Mr. Chow has taught corporate, intellectual property and litigation practice at Suffolk University Law School, including the perennial “Counseling Technology-Leading Emerging Enterprises.” In 1997, he was elected to the American Law Institute, for which he has been active on consultative committees on contract, corporate, employment, intellectual property, international and privacy law

Rob Friedman, Entrepreneur, CEO, and Board Member

Rob Friedman has more than 35 years of senior operating management and consulting experience and has launched several successful venture backed companies with IP. He was cofounder and CEO of Bitstream (BITS, 1981-91); President of Electronics for Imaging (EFII, 1991-92); Chairman of Ares Software (which was sold to Adobe Systems (ADBE, 1993-96) and Softwatch Ltd (1998-2003). BITS, EFII and Ares were all companies with innovative and proprietary software technology as well as patented technology in the electronic and desktop publishing industries. Softwatch was a developer of software to create targeted healthcare Web sites to support global pharmaceutical brand marketing and had no patents. Rob also cofounded and served as Chairman & CEO of Open Security Solutions, LLC (OSS) from 1999 to 2010. OSS was a patent holding and licensing company that entered into agreements with leading patent assertion and licensing companies to successfully monetize its patent portfolio. Rob currently serves as Chairman & CEO of Chestnut Hill Sound Inc. (CHS), which he cofounded in 2004. CHS is presently an application and technology developer.  Rob was a founding Board member of Actio Corporation and continues to serve on its Board of Directors. Actio provides manufacturing companies with centralized supply chain management solutions. Rob has a Bachelor of Science Degree in Accountancy from the University of Illinois and is a CPA having practiced with Arthur Andersen and Price Waterhouse prior to becoming an entrepreneur.


Nikhil Patel, Esq., Of Counsel, Lathrop & Gage, LLP 

Nikhil Patel is a patent attorney and Of Counsel with the Boston office of Lathrop & Gage, focusing on patent prosecution, litigation, and client counseling, guiding engineering companies and universities through the development, management, protection, and enforcement of intellectual property rights.  Practicing for nearly a decade, Nikhil has extensive experience in the technology industry, with an emphasis on electronics, computer science, communications, physical science, medical, and various engineering fields.  He drafts and prosecutes patent applications, and assists clients with intellectual property matters relating to patent litigation, trademark oppositions, written and oral opinions, trademark prosecution, copyright law, licensing, domain name disputes, the sale and licensing of intellectual property assets, and associated counseling strategies. Nikhil also has strong ties with the venture capital and private equity community of Boston.  As a director of a venture capital firm that invests in companies optimizing the use radio frequency spectrum in wireless networks worldwide, Nikhil develops strategic IP assets for portfolio companies to facilitate large exit valuations.  Nikhil further serves as an advisor for a private equity firm that acquired over $300M of spectrum licenses in the most lucrative FCC spectrum auction to date.  

As a serial entrepreneur, Nikhil is also familiar with the challenges faced by startups in developing business plans, attracting investment, and developing robust intellectual property positions.  As CTO of a wireless startup, he was integral in developing and securing IP protection for ground breaking wireless filtration technologies.A leader in the Boston legal community, Nikhil is currently serving his third term as a board member of the Boston Patent Law Association (BPLA).

Bob Weber, Managing Director, Patent Kinetics, LLC

Robert Weber is a successful intellectual property professional, inventor, serial entrepreneur, management consultant, and senior executive. Presently, he is Managing Director, Patent Kinetics, LLC, a company that helps entrepreneurs and patent owners build and monetize valuable patent portfolios. Weber is an inventor with 28 issued US patents and a number of foreign counterparts assigned to Intertrust Technologies, where he served as SVP Business and Technology Strategy, 1996-1999. The Intertrust portfolio was characterized in the Wall Street Journal as a once in a generation billion dollar licensing opportunity. (Intertrust is presently a joint venture of Sony and Philips.) Most recently, Patent Kinetics and its legal team successfully resolved a patent and trademark case brought on behalf of the inventor and trademark owner. Previously, in his role of Vice President, Corporate Development and Licensing (part time), for Open Security Solutions, LLC., Weber was instrumental in licensing a patent portfolio relating to information security to a well-known patent licensing and assertion company and in obtaining a resolution of patent litigation that had been pending in the Eastern District of Texas. In 2009, this litigation was resolved in favor of OSS and its partner company. Weber has also been a Principal Consultant at Northeast Consulting Resources, Inc. At NCRI, his consulting practice focused on the intersection of business and technology strategy with a particular emphasis on Information Commerce, the copyright industries, Internet-based services, and technology-based companies.

Weber divides his time between Boston and Silicon Valley. He is a former Vice Chair, Programs, of the Boston Entrepreneurs Network and is a member of the Licensing Executives Society, the Silicon Valley Forum, and the MIT Enterprise Forum of Cambridge where he serves on the ConnectedThings2016 organizing committee.


Moderator: William R. Byrnes (wrbyrnes@aol.com).

Bill is an attorney and senior executive experienced in assisting entrepreneurs with the legal and business management issues arising on a day-to-day basis in the product, sales, and contract life cycles involving customers, vendors, and other third party relationships.

Bill received his undergraduate degree in English Literature and Creative Writing from Boston University, a J.D. from Suffolk University Law School, and a L.L.M. degree in Taxation from Boston University Law School, Graduate Tax Program. He is also a Boston Entrepreneurs' Network board member.