Corporate/Transactional
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Archived Courses

Corporate/Transactional

February 2, 2012: Oil & Gas Operating and Farmout Agreements

Strafford Webinar

Featured: Strafford Panel Presentation

Joint Operating Agreements (JOAs) and Farmout Agreements are essential instruments in the oil and gas industry. The agreements enable multiple parties to share the risk and expense as well as the benefits of projects that one party would be unable to complete on its own. Though the AAPL 610 Model Form covers many of the important issues a JOA should contain, in order for the agreement to withstand judicial scrutiny, counsel must accurately complete and create pertinent additions to the form to address issues that arise in today’s exploration and production activities.

Farmout Agreements lack a standard form, and they must contemplate evolving exploration and production techniques. Counsel creating these complex and often far-reaching agreements must assess the goals of the two parties, identify key areas to address, and deal with risk management concerns. An authoritative panel of energy attorneys examined the important elements that both Joint Operating and Farmout Agreements should address and how counsel can craft these instruments to enable the parties to control costs, reduce risks, and increase a project’s potential for success.

February 2, 2012: New Partnership Debt-For-Equity Exchange Regulations

Strafford Webinar

Featured: Patrick McCurry, McDermott Will & Emery; Yoram Keinan, Shareholder,Greenberg Traurig; and David Spitzer, Partner, Sullivan & Cromwell

Partnerships, businesses and advisors recently received important clarifications on the partnership- and partner-level federal tax consequences of debt-for-equity exchanges. Advisors need to become familiar with the material terms of these final Treasury and IRS regulations (TD 9557) on Sect. 108(e)(8). The issues can be complex. For example, four conditions must be satisfied for a partnership and creditor to treat equity issued to the creditor as having FMV equal to its liquidation value for purposes of the partnerships’ cancellation of debt (COD) income.

Creditors and advisors face new considerations. Creditors generally won’t have to recognize gains or losses on exchanges of debt for an interest in a partnership. A bad debt deduction can’t be claimed in a debt-for-equity exchange. Rather, a creditor’s basis in the exchange will equal its tax basis. A panel of experienced advisors discussed the new rules on partnership debt-for-equity exchanges.

February 1, 2012: ERISA Successor and Affiliate Liability in Asset Sales and Distressed Benefit Plans

Strafford Webinar

Featured: Lonie A. Hassel, Principal, Groom Law Group & Lars C. Golumbic, Principal,Groom Law Group

Given the distressed nature of many company pension plans, the PBGC and multi-employer pension plans are increasingly seeking solvent entities to satisfy pension claims. There has been significant litigation by multi-employer plans to impose controlled group liability on affiliated companies. Likewise, the PBGC has aggressively raised controlled group liability for defined benefit pension plans terminated in bankruptcy. For example, the PBGC has ruled that a private equity fund and its portfolio companies are liable for an underfunded pension plan sponsored by one of the portfolio companies.

Successor liability and alter ego are similar means of targeting deep pockets to satisfy underfunded or unpaid benefit plan liabilities in the context of M&A asset sales. In such cases, purchasers can find themselves liable for sellers’ delinquent contributions to their multi-employer pension and welfare plans. An authoritative panel of ERISA attorneys discussed the controlled group and successor liability rules for affiliate entity liability for unfunded or underfunded benefit plans.

January 19, 2012: Ethics For The Transactional Lawyer: Puffing, Lies & Negotiation

ALI-ABA Webinar

Featured: Steven O. Weise is a partner at Proskauer Rose LLP in Los Angeles and practices in all areas of commercial law, particularly in the area of financing. He also handles matters involving California real property anti-deficiency laws, workouts, guarantees, sales of goods, equipment leasing, commercial paper and checks, letters of credit, and investment securities. His experience covers e-commerce, contract law (including “plain English” drafting), legal opinions, and consumer law compliance matters. In addition, Mr. Weise lectures widely on commercial law topics and legal opinion letters and is the author of over 100 articles on these topics.

Most transactional lawyers are familiar with the ethical rules on conflicts of interest. But many are less familiar with the rules that apply to negotiating a deal. These rules can apply very broadly, and seemingly innocent statements made during negotiations can get the lawyer in trouble. In addition to disciplinary risk, the unwary lawyer can run the risk of personal liability, client liability (which the client may try to transfer to the lawyer), and even criminal prosecution. Don’t let the ethical pitfalls of negotiating contracts catch YOU by surprise. Led by Steve Weise, partner at Proskauer Rose LLP, this all-new program provided practical guidance on the following questions:

• What can a lawyer say during negotiations?
• Can the lawyer be liable for the client’s misstatements?
• Can the lawyer get in trouble for an omission?
• Does the lawyer have to “know” that what the lawyer says is false?
• How important does the misstatement have to be?
• Can the lawyer talk directly to the other party in the deal

January 17, 2012: Commercial Real Estate Loan Guaranty Enforcement

Strafford Webinar

Featured: Susan C. Tarnower, Kilpatrick Townsend & Stockton; Kevin Watters, The Watters Law Firm; Henry P. Lorber, Managing Director,Hays Financial Consulting; and Stephen D. Peterson, Partner, McGuireWoods

To combat deflation of commercial real estate values and a surge in borrower defaults, commercial real estate lenders are pursuing high net-worth guarantors for repayment of their loans. Counsel for lenders seeking to maximize recovery through real estate loan guarantees must carefully examine the enforceability of the guaranty, the scope of liability, and the maximum amount recoverable from the guarantor.

An authoritative panel of attorneys and a finance professional explained recent legal developments in the use and enforcement of commercial real estate loan guaranties. The panel discussed the practical realities facing lenders seeking to enforce guaranties and offered approaches to maximize loan recovery.

January 12, 2012: Post-Issuance Activities and Enforcement of Patents Under the America Invents Act

AIPLA Webinar

The CLE seminar examined the new post-grant mechanisms of the America Invents Act (AIA) including Post Grant Review, Inter Partes Review, Supplemental Examination, and Transitional Program for Covered Business Method Patents. The operation and implementation of these new mechanisms were explained, as well as the application of these new post grant USPTO proceedings to existing and future patent litigation strategies.

The AIA significantly overhauls and expands post-grant patent practice before the USPTO. Changes include:

• Creation of the new, Patent Trial and Appeal Board (PTAB)
• Introduction of a new, fast-track, post-grant mechanisms for third party challengers
• Overhaul of current patent reexamination practices
• Implementation of collateral estoppel provisions for ITC actions/modifies District Court estoppel provisions
• In some instances, automatic stays of parallel District Court litigation
• Establishment of a special review proceedings for business method patents
• Creation of a supplemental examination provision for patent owners

January 12, 2012: Resolving Environmental Liabilities When a PRP is Insolvent

Strafford Webinar

Featured: Milissa A. Murray, Of Counsel, Bingham McCutchen LLP; William F. Govier, Of Counsel, Bingham McCutchen LLP; and Michael S. McDonough, Partner, Bingham McCutchen LLP

Bankruptcy can pose significant obstacles to managing environmental obligations and risk for non-bankrupt parties. There are often multiple potentially responsible parties (PRPs) at a contaminated property. Traditional environmental laws and settlements among PRPs typically allocate cleanup costs among the parties. When a PRP files bankruptcy, an unallocated orphan share of cleanup costs can be created that other PRPs or the government may be required to absorb. The conflicting goals of bankruptcy and environmental law present a challenge for some environmental creditors as some obligations may be discharged in bankruptcy.

In two recent decisions, the Bankruptcy Court for the Southern District of New York called into question a PRP’s ability to recover against other PRPs that filed for bankruptcy. All parties involved must understand the complex interplay between the bankruptcy code and environmental law and emerging trends. An authoritative panel examined the conflicts between environmental law and bankruptcy law and how bankruptcy can impact the allocation of cleanup costs and remedies for debtor’s contract breaches; recent court decisions and lessons learned; and the process for evaluating environmental cost recovery, contribution, remediation and other liabilities in bankruptcy. In addition, this panel offered best practices for addressing those challenging issues.

January 10, 2012: UCC Article 9 Update

Strafford Webinar

Featured: Edwin E. Smith, Partner, Bingham McCutchen LLP; Richard R. Gleissner, Gleissner Law Firm; and Kevin Caiaccio, The Caiaccio Law Firm

New UCC Article 9 secured lending rules will change filing procedures, searching methods and due-diligence practices for lenders. Financing statements in progress now should be drafted to comply with the new statutory requirements to avoid having to file an amendment. Key areas covered include clarification of the debtor’s name, an expanded definition of “registered organization,” clarification of filing rules for trusts, greater protection for after-acquired property if debtor changes location or merges, and modification of the national form of financing statement.

Preparing for the 2010 Amendments will be necessary during the transition phase. Counsel must identify how the Amendments will affect transactions entered into prior to the effective date and understand how to maintain perfection of security interest with respect to those transactions. An authoritative panel of attorneys discussed the key provisions of the new UCC Article 9 secured lending rules, focusing on changes in filing procedures, searching methods and due-diligence practices, and identifying ways to prepare during the transition phase.

January 5, 2012: Managing 2012 Compliance Priorities

ABA Webinar

This live, two-hour Telephone Briefing presented by members of the American Bankers Association’s Government Relations Group will provide insights on how recent regulatory developments impact what you should prepare for when managing your compliance risk and examination challenges in 2012. The panelists addressed:

• UDA(A)P as a point of the exam spear
• Overdraft services—operating pitfalls
• Servicemembers Civil Relief Act and beyond
• Fair lending pointers
• Payment developments on the horizon
• Mortgage compliance uncertainty
• Consumer Financial Protection Bureau (CFPB) and community banks
• Consumer complaints—mistakes happen
• Communicating adverse action
• Pitching innovation; new product clarity
• Telephone Consumer Protection Act—marketing, communicating and mobility.

Our panel of ABA experts provided a look-ahead to what might be expected from the regulatory agencies and Congress over the coming year as only ABA can. Participants learned what they can do to be SMAART about delivering compliant transactions—for the life of the transaction. This two-hour program was not a regulation training session, but rather a management process update intended to help stay ahead of the evolving compliance oversight curve. !

January 4, 2012: M&A Agreements: Opportunities and Perils in Asset Acquisitions

Strafford Webinar

Featured: Byron F. Egan, Partner, Jackson Walker; David I. Albin, Partner, Finn Dixon & Herling; and Nathaniel L. Doliner, Shareholder,Carlton Fields

Asset acquisitions offer opportunities and perils that stock purchases and mergers do not, but can be more complex. Buyers often prefer asset purchases as a way to acquire a business without its liabilities, but there are significant tax costs and legal doctrines that can limit the effectiveness of liability limitations. Asset agreement provisions specifying assets and liabilities to be transferred, representations, closing conditions, and indemnification covenants are key to accurately reflecting the parties’ bargain. Deal counsel should also address statutory issues such as bulk sales and fraudulent transfer statutes.

Counsel should also consider common law issues such as de facto merger and successor liability theories. Other considerations include contractual rights with third parties related to the assets purchased, intellectual property transfer issues, tax implications, confidentiality issues and indemnification issues. An authoritative panel of M&A attorneys discussed ways to structure and document an asset acquisition, addressing successor liability, stockholder approval, fraudulent transfers and tax implications. The panel identified potential issues when assets purchased comprise a separate division of the seller.

December 21, 2011: Patent Licensing Agreements

Panel Presentation

This CLE webinar prepared IP counsel to craft effective patent licenses by reviewing key clauses and licensing in joint development projects. The panel outlined best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value. To maximize the value of its patents, companies use licensing to generate additional revenue. Non-patent owners look to licensing to improve their products by using existing technologies.

Licensing agreements should include key provisions such as indemnification, limitations on liability, sublicensing rights and payment structure. The agreements must clearly identify the technology that is being licensed and define the scope of the license -- with an eye toward avoiding litigation. By understanding the critical elements to include—and the common pitfalls—in patent licensing agreements, counsel for patent owners and for licensees can prepare to effectively craft and negotiate the agreement in their clients' best interests.

An authoritative panel of patent attorneys examined patent licensing agreements, including standard clauses and variations to those clauses, sub-licensing rights, and licensing in joint development projects. The panel offered best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value.

December 15, 2011: IP Due Diligence in M&A Transactions

Intellectual property (IP) assets are significant value drivers in M&A deals. Failing to identify and thoroughly investigate IP assets in the early stages of a deal may result in price adjustments, structural changes to the transaction, and even termination of a deal.

Common issues that arise during due diligence include: (1) the target does not hold the IP rights; (2) prior agreements exist that limit the target’s IP rights; (3) the target is subject to pending infringement claims; or (4) the target’s IP rights are encumbered by liens.

Comprehensive due diligence involves identifying and evaluating documents to review, people to interview, and the target’s IP assets, trade secrets, licensing agreements, and lawsuits or settlements involving IP assets.

An authoritative panel of attorneys explained key considerations for conducting IP due diligence in M&A deals and offered strategies for using the results of due diligence to negotiate pricing and other deal terms.

December 7, 2011: A Year After Bilski v. Kappos, the Patentable Subject Matter Struggle Continues 

Featured: Andrew T. Spence, Partner, Smith Moore Leatherwood LLP and Kimberly Bullock Gatling, Partner, Smith Moore Leatherwood LLP

In a measure to address the issues of patentable subject matter, the Supreme Court’s Bilski v. Kappos decision seems to have raised more issues than it resolved. Yet even with the differences of opinion regarding patent eligibility between courts and PTO, applicants can still best position themselves to achieve an issued patent that can sustain a statutory subject matter challenge.

An expert panel of patent litigation professionals from Smith Moore Leatherwood LLP reviewed a number of relevant district court and Federal Circuit decisions since Bilski, the PTO’s formal and perceived views on Bilski, explored the differing views on patent eligibility, and provided practical tips for dealing with those views. This webinar explained how to:

• Recognize differences of interpretation of statutory subject matter within and between courts and the PTO
• Draft patent applications to accommodate claims for varying interpretations of statutory subject matter
• Talk to examiners regarding their particular requirements of patent eligibility, and avoid appealing a disagreement on the issue to the Board of Patent Appeals & Interferences during prosecution of a patent application
• Evaluate (or re-evaluate) how different courts may resolve a statutory-subject-matter challenge to its claims, and consider amending and/or adding claims to account for any discrepancies toward the end of prosecution of a patent application

December 7, 2011: E-Discovery in Legal/Legal Process Outsourcing Industry

Featured: KPO Consultants

The webinar covered:

• Offshoring Issues: Relative advantages of outsourcing e-discovery
• Requirements for ethical protection and production of e-records
• Best practices of e-discovery and increased control over the e-discovery process
• Training LPO staff on e-disclosure to leverage the accessible talent pool
• Indentifying the pros and cons of outsourcing an e-disclosure process before entering into legal proceedings
• Disclosure obligations: Preservation, retrieval and organization of the documents and data to facilitate reviews for disclosure and investigatory purposes
• Learning, what offshore document review operations should know about US e-discovery and European Union data protection regulations
• Avoiding the potential pitfalls - especially regarding your firm's reputation for ethical business practices--in litigation where work has been outsourced

November 30, 2011: FDIC Receivership: Legal Considerations For Banks and Their Stakeholders

Strafford Webinar

Featured: Dennis S. Klein, Partner, Hughes Hubbard & Reed; Ronald R. Glancz, Partner, Venable; and John L. Douglas, Partner, Davis Polk

This CLE webinar prepared attorneys in litigation involving an FDIC receivership on the FDIC’s special powers when acting as a receiver or conservator of a failed bank. The panel examined the unique issues that arise in FDIC litigation and outlined approaches for litigating on behalf of, or against, the FDIC. The continuing spiral of bank failures has broad implications for entities that deal with distressed banks—depositors, creditors, borrowers, guarantors, contractors, vendors and other banks. Parties anticipating claims against a distressed bank must understand the FDIC receivership role and its special powers. For example, the FDIC has broad discretion to disregard unenforceable agreements and repudiate contracts that it deems too burdensome.

The unique issues that arise in FDIC litigation include the automatic stay, jurisdictional issues, removal to federal court, and tolling of the statute of limitations. There have been recent developments regarding FDIC investigations and suits filed against directors and offices of failed banks. The panelists discussed both the claims against directors and officers and the defenses being asserted. An authoritative panel of attorneys discussed the process of an FDIC receivership or conservatorship and explained how the FDIC’s special powers work and the unique issues that arise in FDIC litigation.

November 29, 2011: MAC Clauses & Indemnification in M&A

Strafford Webinar

Featured: Todd B. Pfister, Partner, Foley & Lardner, Chicago; Jeff J. Litvak, Senior Managing Director—Forensic Litigation, FTI Consulting, Chicago; and Kevin D. Kreb, Partner; PricewaterhouseCoopers, Chicago

Material adverse change (MAC) clauses and indemnification provisions are intensely negotiated terms in merger and acquisition transactions. Failing to anticipate and address risks during the structuring of a deal can result in unintended legal and financial exposure for buyers and sellers. Buyers are increasingly using MAC clauses to exit troubled deals. Questions about what constitutes a material adverse change have triggered a number of lawsuits. So far, courts have provided limited guidance on the interpretation of MAC clauses in merger agreements.

Indemnification provisions help parties minimize financial loss when a deal goes bad. Counsel negotiating indemnification terms must consider time, subject matter and dollar limitations, escrowed funds, setoff rights and payment on indemnification. Boilerplate provisions can be dangerous. Sn authoritative panel of deal experts explained the impact of the volatile market on the negotiation of MAC clauses and indemnification provisions and provided strategies for crafting deal terms that benefit and protect buyers and sellers and reduce post-closing disputes. Items covered included:

• Negotiating MAC clauses
• Be specific about conditions constituting MAC
• Use broadly written MAC clauses only as “backstop” protection
• Mention information relied on, such as business or financial projections
• Watch language construction
• Buyer should include potential adverse events outside of seller’s control
• Include broad language to cover unknown risks
• Seller should attempt to limit specific carve-outs buyer proposes
• Seller might require that it have knowledge of MAC for clause to be enforceable
• Negotiating indemnification provisions
• Consequential and incidental damages
• Fraud exclusion
• Purchase price adjustment and double-dipping
• Defense of third-party claims
• Evaluating and addressing creditworthiness of indemnitors
• Financial analysis applicable to determination of a MAC – Delaware Courts criteria
• Dramatic downturn
• Disproportionality
• Durational significance
• Unknown to the buyer

November 28, 2011: Accessing USDA Loans for Advanced Biofuels and Chemicals

Infocast Webinar

Featured: William F. Hagy III, Director of Alternative Energy Policy, US Department of Agriculture (USDA)

This session provided a brief overview of the numerous programs within USDA that support the President's Clean Energy Blueprint and how to access these programs.

The rapidly-expanding bio-based sector is just as critical to the US economy as it is to the environment. With its release of The President’s Clean Energy Blueprint, The Obama administration has made bio-based power, chemicals, and advanced biofuels a national priority. The USDA has numerous programs designed to foster growth in all these areas. But what are these programs? How will I identify the programs that are the best fit for my project? How can I access these programs? In this informative webinar, Bill Hagy, the USDA’s Director of Alternative Energy Policy, explained how to get the federal support bio-based projects need to get up and running.

November 15, 2011: M&A Agreements: Limitations on Contractual and Extra-Contractual Liabilities

Strafford Webinar

Featured: Glenn D. West, Partner, Weil Gotshal & Manges; Byron F. Egan, Partner, Jackson Walker; and Patricia O. Vella, Special Counsel, Morris Nichols Arsht & Tunnell

Effective limitations on liability clauses in written M&A agreements anticipate dissatisfied parties to an agreement attempting to evade the limitations by asserting allegations of fraud or misrepresentation, based on claimed inaccuracies of pre-contractual representations and contractual warranties. Deal counsel must craft contract language to maximize the likelihood of enforcement of the exclusive remedy provisions in the contract, minimizing risk to the seller of contractual and extra-contractual post-closing liability in mergers and acquisitions.

An authoritative panel of merger and acquisition attorneys prepared counsel to craft contracts that limit contractual and extra-contractual liabilities, focusing on sources of extra-contractual liabilities, ways to protect parties through auction and negotiating processes, and exclusive remedy and extra-contractual representation waiver provisions.

November 9, 2011: Playing By the Ethical Rules: How “Engaging” Can Estate Planners Be? 

ACTEC Teleconference

Featured: Charles D. Fox, IV (Moderator), McGuireWoods LLP; Christopher H. Gadsden, Gadsden Schneider & Woodward LLP; Cynda C. Ottaway, Crowe & Dunlevy, P.C.; and Mary F. Radford, Georgia State University College of Law

The Panel used a series of hypotheticals to explore the ethical issues that estate planners should consider at the beginning of representation, when being engaged for their services by new and existing clients. These issues were discussed in the following contexts:

• Representing an Individual
• Jointly Representing a Traditional Married Couple
• Jointly Representing a Couple Joined by a Civil Union
• Representing Different Generations of Family Members in Different Transactions
• Representing Different Generations of Family Members in the Same Transaction
• Representing Business Partners in their Estate Planning
• Representing a Client Who Is Becoming Incapacitated
• Representing a Fiduciary; Conclusion

November 9, 2011: Streamlining and Expediting the Patent Examination Process

AIPLA Webinar

Featured: Ernest Beffel, Haynes Beffel & Wolfeld, LLP, and Thomas Ward, Fliesler Meyer LLP

Navigating through the U.S. Patent and Trademark Office (USPTO) can be long and exhausting. Participants learned how to streamline and expedite the patent examination process in their client’s favor. The course provided a practical guideline to take advantage of USPTO rules and programs, including examiner interviews and Track I accelerated examination to manage client costs, enhance quality of work product and reduce the pendency of an application.

November 8, 2011: Copyright Infringement and Defeating Substantial Similarity

Participants discussed Copyright Infringement and Defeating Substantial Similarity.

October 27, 2011: Product Distribution Agreements

Featured: Joel R. Buckberg, Of Counsel, Baker Donelson Bearman Caldwell & Berkowitz and Andre R. Jaglom, Partner, Tannenbaum Helpern Syracuse & Hirschtritt LLP

Drafting product distribution agreements can be challenging for suppliers and distributors due to frequent changes in how products are marketed and distributed and the wide array of legal issues implicated. When negotiating distribution agreements, counsel for both parties must understand and carefully craft provisions related to the scope of the agreement, non-exclusivity requirements, non-compete obligations, performance requirements and others. Boilerplate clauses are very risky.

A panel of attorneys experienced in negotiating product distribution agreements discussed best practices for drafting and negotiating the contracts. The panel discussed specific clauses that should be included in agreements and provided strategies for avoiding common negotiation pitfalls.

October 27, 2011: USPTO Implementation of the America Invents Act

AIPLA Webinar

Featured: Janet Gongola, Patent Reform Coordinator, USPTO

On September 16, 2011, the America Invents Act (AIA) was signed into law and introduced substantial changes to the United States patent laws. Over the next 18 months, various provisions of the AIA will go into effect requiring patent practitioners, applicants, and patentees to revise their practices and strategies for patent preparation, prosecution, protection and enforcement. Janet Gongola, Patent Reform Coordinator for the U.S. Patent & Trademark Office (USPTO), provided insight into the USPTO’s implementation of the AIA, discussed the impact the AIA will have on patent examination, post-issuance matters and the USPTO’s fee and budgetary issues, and highlighted the anticipated challenges for implementing the AIA in the USPTO.

October 25, 2011: The Corporate Attorney’s Guide to Business Valuation in the M&A Context

Houlihan Lokey Webinar

Featured: Aswath Damodaran, Professor of Finance, Stearn School of Business at New York University

For this valuation Webinar series, Houlihan Lokey was pleased to be joined by Professor Aswath Damodaran of the Stern School of Business at New York University. He presented a 60-minute overview of valuation practices as they relate to corporate transactions. Professor Damodaran’s contributions to the field of finance have been recognized many times over. He has been the recipient of Giblin, Glucksman, and Heyman Fellowships, a David Margolis Teaching Excellence Fellowship, and the Richard L. Rosenthal Award for Innovation in Investment Management and Corporate Finance. His skill and enthusiasm in the classroom garnered him the Schools of Business Excellence in Teaching Award in 1988, and the Distinguished Teaching award from NYU in 1990. His student accolades are no less impressive: he has been voted “Professor of the Year” by the graduating MBA class five times during his career at NYU.

Houlihan Lokey’s Christopher Croft, Managing Director and Co-Head of the Fairness and Solvency Opinion practices provided a brief introduction at the start of the Webinar, and Jennifer Muller, Managing Director, moderated an interactive Q&A session for attendees immediately following the presentation.

October 25, 2011: Antitrust Risks in IP Acquisitions, Transfers & Licenses

Strafford Webinar

Featured: Paul Saint-Antoine, Partner, Drinker Biddle & Reath; Henry C. Su, Attorney Advisor, Federal Trade Commission; and M. Howard Morse, Partner, Cooley

IP and antitrust laws are sometimes said to be in conflict — IP laws allow for exclusionary conduct while antitrust laws discourage it. This intersection has long led to disputes when firms have pooled, bundled, tied and restricted prices of intellectual property. In recent years, as antitrust enforcers have increased their attention to intellectual property, navigating successfully between these two bodies of law has become even more important.

Courts, government agencies and standard-setting organizations continue to clarify antitrust law restrictions on the owners of patents, copyrights and other forms of intellectual property. Counsel for IP owners must stay on top of these current trends in antitrust enforcement in order to help their clients recognize and avoid potential antitrust liability.

An authoritative panel of antitrust and IP attorneys discussed how to effectively minimize antitrust risks in IP transactions. The panel also highlighted current trends in government investigations and litigation.

October 13, 2011: Drafting Clearer Contracts

Featured: Kenneth A. Adams, Esq., As the leading authority on contract language, Ken Adams has successfully coached people around the world in drafting clearer contracts. His book A Manual of Style for Contract Drafting is on the ABA’s best-selling titles. As part of its Legal Rebels project, in 2009, the ABA Journal named Mr. Adams one of the 50 leading innovators in the legal professions. Ken attended the University of Pennsylvania Law School. Before going to law school, he lived in Europe (primarily England) and Africa, the result of his father's serving with the U.S. State Department. He received his undergraduate degree in 1983 from the University of York, England. His years overseas have made him aware of the needs of lawyers who are not native English speakers yet find themselves drafting and negotiating contracts in English. Ken practiced corporate law at major law firms in New York and Geneva, Switzerland, including Jones Day and Winston & Strawn. He is the founder and president of Koncision Contract Automation, an online service that will make available to lawyers document-assembly templates of business contracts.

Contract drafting is a vital function at law firms. In this workshop, Mr. Adams explained how to draft contracts that clearly express the intent of the parties. The focus is not on what you say, but how you say it. Mr. Adams also demonstrated the flaws in standard usages and recommended clearer, more concise alternatives. Highlights of the session included:

• The front and back of the contract
• Categories of contract language
• Layout and defined terms
• Drafting as writing
• Bringing it all together

October 11, 2011: Section 1603 Cash Grants for Renewable Projects

Strafford Webinar

Featured: Andrew W. Ratts, Partner, Winston & Strawn, Chicago and additional faculty to be announced.

Section 1603 cash grants are an important financing tool for renewable energy projects. The grant program reimburses a portion of the expense incurred in acquiring specified energy property and is in lieu of other available tax credits. The window to take advantage of this is quickly closing. Counsel must understand the complexities surrounding the requirements to ensure eligibility and should advise clients on leveraging this financing option before it expires at the end of 2011.

Our panelists prepared counsel involved in renewable energy projects with guidance for preserving eligibility for the section 1603 cash grant. We discussed the financing structures that can utilize the grants and offered strategies for taking advantage of the grants before they expire. The panel reviewed these and other key questions:

• What are the critical steps to preserve eligibility for the section 1603 cash grant?
• What financing structures are unique to the cash grant?
• What is the latest guidance from Treasury regarding cash grant eligibility?

October 5, 2011: Practical Implications: The Impact of the America Invents Act

AIPLA Webinar

Featured: Thomas Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and Alan Kasper, Sughrue Mion PLLC

The Nation’s patent laws dramatically changed on September 16, 2011, when President Obama signed the Leahy-Smith America Invents Act into law. Two veteran intellectual property attorneys explored the Act’s substantive provisions, which span 150 pages in the underlying Bill, including those implementing one of the most significant and highly publicized changes to U.S. patent law, namely the move from a first-to-invent to a first-inventor-to-file system, as well as provisions regarding new definitions of prior art, third-party challenges to patents and applications, supplemental examination, derivation, and USPTO fees and funding, and many others. The effective dates of the Act’s provisions range from enactment to less than eighteen months from now.

October 4, 2011: Structuring Software and Technology Licensing and Development Agreements

Strafford Webinar

Featured: Paul H. Arne, Partner at Morris Manning & Martin and Paul C. Jorgensen, Principal at Jorgensen Law Firm

Companies or individual inventors often use or adapt existing technologies to create new products. To take the products to market, they must enter licensing agreements with the owner of the preexisting software or technology. Licensing and development agreement should include key provisions such as ownership, indemnification, liability, and payment structure. The agreements must clearly identify the technology that is being licensed and define the scope of the license. Counsel to the technology owner and counsel for the licensee or developer must understand the critical elements that should be included in a license and the common challenges. Counsel must be prepared to effectively craft and negotiate the agreement in the client’s best interest.

Participants discussed key clauses and offered best practices for structuring the agreements and avoiding common pitfalls. The panel reviewed these and other key questions:

• What are the key contract terms to include in technology licensing and development agreements?
• What methods can be used to effectively assign ownership and development rights?
• What are the critical steps to minimize confidentiality risks in licenses?
• What strategies can be used to resolve commonly disputed issues in technology licensing agreements?

September 28, 2011: USPTO Post-Grant Proceedings After New Patent Reform Law

Strafford Webinar

Featured: Scott A. McKeown, Partner at Oblon Spivak McClelland Maier & Neustadt and Kevin B. Laurence, Partner at Stoel Rives

On Sept. 8, 2011, the U.S. Senate passed the House version of the Smith-Leahy America Invents Act, the most significant revamping of the patent system in decades. President Obama is expected to sign the bill, putting in place a new post-grant system and altering the patent system from first-to-invent to a first-to-file system. Several changes will take effect upon enactment, while some provisions will not be effective for a year or more. Counsel must understand the many aspects of patent reform to advise clients on meeting the new requirements and protecting their intellectual property rights.

The presenters provided guidance for counsel to IP owners and inventors on the new law’s post-grant system, including post-grant review proceedings, special transitional post-grant review of business method patents and supplemental examinations. The panel reviewed these and other key questions:

• What are the grounds for post-grant reviews now? What is the procedure for review?
• What must be demonstrated for inter partes review? What is the procedure for review?
• What steps can IP owners take to meet the requirements of the new post-grant proceedings?

September 21, 2011: What Matters Today: Issues Impacting Your Business 

J.P.Morgan Breakfast Teleconference

Featured: Jim Woolery, co-head of J.P. Morgan’s Mergers and Acquisitions business in North America. Before joining J.P. Morgan, Jim was a partner at Cravath, Swaine & Moore where he focused on mergers and acquisitions and chaired the firm’s Business Development Group.

Jim Woolery discussed the current M&A environment. Mr. Woolery, who has been instrumental in some of the market’s largest M&A deals, shared his perspective on what is driving deal flow, the impact of the economy on deals and how globalization is changing the market.

September 21, 2011: Patent Prosecution: Recent Case Law Developments That Will Impact Your Practice

AIPLA Webinar

Featured: Amy Landers, McGeorge School of Law, & Steven J. Schwarz, Venable LLP

The courts and legislature are once again reshaping the ever-changing landscape of U.S. patent law. Get caught up on the practical impact of recently decided and upcoming cases, including among others Mayo v. Prometheus, Microsoft v. i4i, Therasense v. Becton Dickinson, and In re Klein, as well as the soon to be enacted Patent Reform Act. McGeorge School of Law Professor and former Orrick litigator Amy Landers and Venable Of Counsel Steven J. Schwarz provided expert analysis and commentary, and explained the effects of the decisions on every day prosecution practices. Participants learned new guidelines for functional claiming, avoiding inequitable conduct, and arguing teaching away, non-analogous art, and more.

September 16, 2011: Business Associates Round Table Discussions

The Business Associates hold monthly round table discussions on a variety of topics.

September 14, 2011: Bank Executives Under Heightened Scrutiny by the FDIC

Strafford Webinar

Panel Featured: Mary C. Gill, Partner, Alston & Bird, Atlanta; Harold P. Reichwald, Partner, Manatt Phelps & Phillips, Los Angeles; Steven C. Morrison, Counsel, Professional Liability/Financial Crimes Group, FDIC, Jacksonville, Fla.; and Linda D. Kornfeld, Partner, Jenner & Block, Los Angeles

In the past year, the FDIC has filed nine lawsuits against 68 officers and directors of failed banks in an effort to recover $6.8 billion in damages. According to the FDIC, it has authorized lawsuits against 266 individuals at 30 failed institutions, indicating many more suits are imminent. Counsel for bank executives of failed or failing institutions should review coverage under applicable D&O insurance policies and anticipate policy exclusions that insurers are most likely to raise.

In addition to the FDIC litigation threat, regulatory agencies can initiate administrative enforcement proceedings against directors and officers of a financial institution seeking civil monetary penalties that are often not covered by D&O insurance policies. An authoritative panel of attorneys discussed trends in FDIC litigation and agency enforcement actions against executives of failing or failed financial institutions, reviewed theories of liability, common defenses, and D&O insurance coverage issues, and suggested best practices for preparing a solid defense.

September 13, 2011: Marketability Allowances in a Federal Tax Environment - The Most Contentious Valuation Issue

Featured: Timothy K. Bronza, CPA/ABV, ASA, President, Business Valuation Analysts, LLC. Mr. Bronza has been involved in valuing business interests for over 20 years for a variety of purposes, including federal and state tax purposes, probate litigation, eminent domain proceedings, dissenting shareholder actions, and strategic business planning, with an emphasis on valuations for corporate and federal tax transactions. He is a frequent speaker and has lectured before the American Bar Association, The Florida Bar Association, and the Southern Federal Tax Institute. He holds a B.A. in business administration from the University of South Florida with majors in accounting and marketing. He is also accredited in business valuation by the American Society of Appraisers and the American Institute of Certified Public Accountants.

Mr. Bronza provided a solid overview of marketability allowances including:

• Traditional methods of support for lack of marketability allowances
• Selected Tax Court opinions on marketability
• Nontraditional methods of support for lack of marketability allowances
• Recent developments regarding lack of marketability
• The Comprehensive Allowance for Lack of Marketability Methodology (CALOM)

August 23, 2011: Blue Sky

Reg D Offerings & Private Placements ALI-ABA Pre-Recorded Conference

Featured: Denise Voigt Crawford, Commissioner, Texas State Securities Board and Robert Rapp, Calfee, Halter & Griswold LLP

Topics discussed included how to identify and solve blue sky issues relating to a private offering; when state and federal broker-dealer registration is required; the most common sources of exposure to enforcement actions or civil liability and how to avoid them; joint or parallel enforcement initiatives by the states; the role of NASAA; the use of finders and other “consultants.”

August 9, 2011: Bonus Depreciation: Making Informed Decisions About Upcoming Capital Investments

Strafford Webinar

Featured: Mary Burke Baker, Government Affairs Advisor, K&L Gates, Washington, D.C.; Tom Windram, Managing Director,RSM McGladrey Inc., Washington, D.C.; David McGuire, Director, McGuire Sponsel, Indianapolis; and Edward Meyette, Partner, Crowe Horwath, Grand Rapids, Mich.

Over the next few months, companies, their federal tax professionals and outside tax advisors must make critical decisions about capital investments. Equipment must be placed in service by Dec. 31, 2011, to qualify for a 100% bonus depreciation deduction approved by Congress in 2010. IRS Rev. Proc. 2011-26 provides long-awaited guidance on qualifying for the latest bonus depreciation and applying limits and special exceptions. However, this guidance does not simplify the complex decisions involving acquisition dates, improvements to existing property, like-kind exchanges, etc.

State policies on 100% bonus depreciation are a mishmash of complete matches, outright decouplings and phased-in allowances of the tax benefit. Tax professionals and advisors must soon navigate the material rules to help companies make investment decisions before the Dec. 31 deadline. This panel of experienced federal tax advisors updated participants on the federal rules for, and state approaches to, 100% bonus depreciation and explores complex aspects of decisions about qualifying equipment, leasehold and other investments.

August 9, 2011: Trademark Functionality After Fleischer v. A.V.E.L.A.

Strafford Webinar

Featured: B. Brett Heavner, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. and Anthony L. Fletcher, Senior Principal, Fish & Richardson, New York

The Ninth Circuit resurrected the doctrine of aesthetic functionality, which many had considered dormant. Its recent Fleischer Studios v. A.V.E.L.A. decision held that imprinting a trademarked image on a t-shirt to display fanhood of the image was a functional use and was not infringement. This decision apparently supports displaying a trademarked image on apparel, among other uses, without receiving authorization from the mark owner, so long as the use of the image is to demonstrate that the end user is a fan or showing loyalty to the image.

In light of this ruling, counsel to trademark owners must reevaluate management and licensing of trademarks and take steps to protect against unauthorized use of their marks. The panelists, recruited from the country’s top law firms, developed this program to provide guidance to trademark counsel to understand the current landscape surrounding functional use and aesthetic functionality. We analyzed the recent Fleischer Studios v. A.V.E.L.A. decision and outlined management and licensing practices to protect trademarks.

August 2, 2011: Preparing Offering Materials & Subscription Documents AND Private Offerings by Small Businesses & Start-Up Ventures

Reg D Offerings & Private Placements ALI-ABA Pre-Recorded Conference

Featured: Katherine Blair, K&L Gates, LLP; Kimberley Mann, Pillsbury Winthrop Shaw Pittman LLP; and David Martin, Covington & Burling LLP

Session One Overview: Review of disclosure requirements and drafting techniques for the preparation of the offering materials; “Plain English” in private placements; materiality; offers made only to accredited investors; projections and forecasts; the applicability of the “bespeaks caution” doctrine and safe harbors; subscription documents and prospective offeree questionnaires; placement agent documents; closing requirements and legal opinions; the efforts by some states to “re-regulate” private placements.

Session Two Overview: Recommendations from the annual Small Business Forum; the application of private offering rules and techniques to capital raising transactions for small businesses, start-up ventures, and transactions with venture capital investors and joint venturers.

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Litigation

February 2, 2012: Negotiating & Drafting Settlement Agreements

Featured: Mark Vyvyan and Brian McCool

Mark & Brian covered practical lessons for negotiating and documenting settlements, including selecting the right type of release for your settlement.

January 5, 2012: E-Discovery Traps For the Unwary

Presenters: Emily Duke and Cindy Moyer

Participants learned how to avoid e-discovery disputes and traps. Topics covered included:

• Documenting a litigation hold
• Performing custodial interviews
• Early case assessment
• And much, much more

December 1, 2011: Privileges

Featured: Sten-Erik Hoidal, Leah Janus, and Joann Landkamer

The panel discussed attorney-client privilege, work product privilege, privilege logs, common interest agreements, and special problems with accountants, corporate counsel and board members. They also provided specific examples of documents that have engendered some discussion/debate internally as to whether privilege applies and, if so, why.

November 22, 2011: Legal Writing Refresher

Litigation Associates Monthly Training-Year II

Featured: Karin Ciano, Esq. - Karin is a solo practitioner specializing in trial and appellate brief writing, and in assisting lawyers who are new to federal court. She graduated from NYU School of Law in 1995, worked for several years as a litigation associate at Debevoise & Plimpton in New York, then returned to NYU to teach full-time in the Lawyering Program. In 2003 she moved to Minnesota to clerk for the Honorable James M. Rosenbaum; she served as Judge Rosenbaum’s career clerk for seven years, and later clerked for the Honorable Ann D. Montgomery and the Honorable Arthur D. Boylan. She has taught as an adjunct faculty member at William Mitchell College of Law and the University of Minnesota Law School. She is on the board of the Federal Bar Association and serves as its Law School Liaison. She is also on the board of advisers to the Green Bag Almanac and Reader, and is always looking for well-written briefs to consider nominating for inclusion in the Almanac.

This program reviewed briefs from a brief reader’s perspective, with special attention to editing. Participants considered what makes an argument convincing, credible and memorable, and they put themselves in the shoes of the decisionmaker. They were asked to “workshop” sample briefs, identified ways they can be improved, and proposed edits of their own. Participants were given a brief writing/editing checklist that will help organize their thoughts when they are shepherding a brief through its final stages.

October 6, 2011: Lexis Workflow Tools - Sneak Preview

Featured: David Dilenschneider, Director of Litigation Product and Content Development for Lexis

This was a sneak preview of two new Lexis products that the firm plans to roll out, showing how Lexis is delivering tools designed to streamline a litigator’s workflow.

Lexis Search Advantage (LSA) - This “knowledge management” solution will make it much easier to search our own document management system to answer such common questions as “Has anyone appeared before Judge so-and-so?” or “Has anyone drafted a recent brief in support of...?” LSA will help improve your efficiency while reducing the hassle involved in tapping the knowledge and experience of your litigation colleagues.

Lexis for Microsoft Office (LMO) - This software will live on your Outlook and Word toolbars. As you draft and review email messages and Word documents, it can automatically pull up copies of cases, statutes, judge profiles and other information, and insert Shepard’s symbols. It will also allow you to highlight words or phrases in your emails and Word documents and automatically run searches in Lexis.com, our own document management system, and/or LexisWeb.com. Finally, LMO will enable you to store cases and other information in folders that you can share with colleagues.

September 9, 2011: Trial Simulation Exercise

Informative exercise on trial simulation was held at the Federal Courthouse.

August 23, 2011: ECF Basics, Best Practices & Upgrade Overview

Featured: Jackie Ellingson, Data Quality Analyst, U.S. District Court, District of Minnesota, and Kari Swedberg, ECF Analyst, U.S. District Court, District of Minnesota

Jackie & Kari demonstrated an electronic filing and covered all you need to know to successfully use the system including:

• ECF Basics: ECF Overview & Support Information, Initiating Cases, Documentation Basics, Key Tips & Technical Reminders.
• ECF Best Practices: Filing Stipulations and Extensive Exhibits, Redaction of Personal Identifies, Filing Sealed Documents, ECF Transcript Process
• ECF Upgrade: An overview of what's planned for the upcoming upgrade (scheduled implementation late August)

August 9, 2011: Construction Delay Claims: Proving and Defending Damages

Strafford Webinar

Featured: Timothy L. Pierce, Partner, K&L Gates, Los Angeles; Robert A. Meynardie, Partner, Meynardie & Nanney, Raleigh, N.C.; and Stanley A. Martin, Partner, Duane Morris, Boston

Construction delays are common in the building industry; they can result from permit and approval problems, design issues, price disputes, differing site conditions, and a number of other issues. Construction delays are among the most frequently litigated construction disputes. Construction delay litigation often centers on whether a delay was excusable, its impact on productivity, and if the delay was non-excusable, appropriate compensation for resulting damages.

Construction counsel proving or defending damages in delay claims can arm themselves with effective litigation strategies to achieve the best outcome for their client, including leveraging clauses in the construction contract to strengthen their client's position. This panel of construction law attorneys discussed best practices for proving and defending damages arising from construction delay claims. The panel also discussed proactive steps counsel can take to minimize construction delay litigation.

August 4, 2011: Closing Argument Simulation

Featured: Lora Friedemann, Greg Karpenko and Darren Schwiebert

This was a second chance for those of you who were unable to attend the July session. The rooms were divided into two, one for Intellex counsel and one for Cranbrooke counsel. Participants decided with their trial partner which one would do the opening and which one would do the closing and coordinated so that there was one, consistent trial theme. During this session, participants gave the first portion of the argument and performed the first phase of the argument (beginning powerfully with a memorable theme). They then transitioned into the next phase (starting to discuss the important details of the story). Check out the Winning at Trial text to read more on openings and closings.

August 3, 2011: Life In The Fast Lane - PCT - Patent Prosecution Highway Filings

AIPLA Webinar

Featured: Samson Helfgott, Katten Muchin Rosenman LLP

The Patent Prosecution Highway (PPH) presents great opportunities for applicants. Both through the Paris route, as well as the newly instituted PCT-PPH route, applicants can gain great benefit by utilizing the PPH. The guaranteed ability to get expedited or accelerated examination is available simply by filing the petition with all the corresponding material needed. However, the benefits of greater allowance rates, reduction in the number of office actions, cost savings, more uniformity of claims around the world, streamlined prosecution, and other benefits are all available to applicants as a result of the PPH. This program will briefly discuss the requirements and examine the benefits of the PPH, discuss the recently launched PCT-PPH program, and provide best practices for utilizing the PPH and PCT-PPH.

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Business Development

January 13, 2012: Build Your Bio in the New Year

This course covered the importance of attorney bios, the pertinent information clients expect to see, and best practices to showcase your expertise. The session gave a hands-on review of current bios and feedback on content to incorporate - the marketing managers were present to assist.

December 7, 2011: Community Presence: Board Boot Camp for Effective Nonprofit Board Service

Featured: Judy Sharken Simon, of MAP for Non-Profits and Steve Helland. Judy has been with MAP since 2006 and is responsible for MAP’s Best on Board® program, volunteer program, and board training programs, which includes MAP’s Board Boot Camp, Advanced Board Boot Camp, and Board Chair Training, among others. Annually, MAP’s Best on Board® program places many Twin Cities management experts (volunteers) on the boards of directors of Twin Cities nonprofit organizations. Judy provides training to ensure that nonprofit board members and prospective board members understand the importance and responsibilities of their nonprofit board roles. Judy’s practice through MAP also includes working with nonprofit clients in the areas of nonprofit organization development, including board development, life stages work, and strategic planning.

Prior to joining MAP, Judy worked with nonprofit organizations for more than 20 years. She served as a senior consultant with the Community Services Group of the Amherst H. Wilder Foundation for over ten years. While there, she authored The Nonprofit Field Guide to Conducting Successful Focus Groups as well as The Five Life Stages of the Nonprofit Organization: Where You Are, Where You’re Going, and What to Expect When You Get There. Judy has a bachelor’s degree in employee relations from Michigan State University and a master’s degree in organization development from the University of Minnesota.

Are you new to serving on a non-profit board or considering joining a non-profit board for the first time? Steve Helland along with Judy Sharken Simon, of MAP for non-profits (who has taught this most popular course MAP’s for years), discussed topics including:

• Fiduciary duties of directors
• Not-for-profit vs. For profit entities
• Role of the board (vs staff)
• Highlights of Minnesota’s dynamic non-profit sector
• Questions to ask before you join a board
• What do you bring to a board (don’t sell yourself short)

November 8, 2011: Social Media

Featured: The Geek Girls: Nancy Lyons, founder, President & CEO of Clockwork Active Media Systems and Meghan Wilker, Managing Director at Clockwork Active Media Systems

Whether it is through your friends, family or clients, you are no doubt aware of the effect social media is having on daily communication. From LinkedIn to Facebook to Twitter, there are many ways that people are trying to reach you and develop relationships. But do you know what that means for your practice and client relationships, not to mention the effect it will have on your time management?

Social media and engagement can be an overwhelming proposition, especially in light of the current demands of your practice. The Geek Girls discussed how social media can be utilized and managed in day-to-day communication. Whether trying to effectively build client relationships or learn how to better manage the constant flow of communication, this session provided tools to manage communication flow and help determine when engaging in social media can be useful.

October 18, 2011: Client Feedback

Featured: John Koneck, Julie Snow-Samanant, and Grant Fairbairn

At any time and during any economic climate, your clients are your most important assets. Formally seeking client feedback may be the most underutilized technique for improving client relationships. To strategically enhance the relationship with the clients you have and gain new ones, you must listen to them, understand their goals and develop strategies to align your offerings with their needs. In addition, by talking to clients we learn the key areas that help us differentiate our services from our competitors. If we aren’t talking to our clients -- our competitors are.

So, what are we hearing from our clients? This session focused on the feedback received and common themes from nearly 20 Fredrikson client interviews completed over the last 18 months. What do clients look for from their key service providers? What do we do well and can be considered best practices? What can we do better? What’s the impression of Fredrikson in our target markets? What marketing and business development initiatives are appreciated? Which efforts make no sense and actually annoy our clients?

Finally, tips and strategies were provided to get the conversation going with clients.

September 29, 2011: Client Development: A Matter of Differentiated Value

Featured: Werten F.W. Bellamy, Jr. Werten is the President of Stakeholders, Inc., a company founded in 2007 that provides training and conference resources directed to the active career management needs of corporations and professional service firms. His work is focused on the role in-house counsel, law firm associates and partners must play in driving their career outcomes and is directed to identifying the practical career strategies of top performers. Stakeholders has delivered training and consulting to over seventy (70) global law firms and law departments. In 2010, Werten was selected by the Leadership Council for Legal Diversity (LCLD) to design and help implement its talent development efforts directed to top performing law firm and law department attorneys.

Werten launched Stakeholders following sixteen (16) years of practice in both law firms and law departments. Werten began his career as an Associate in the Washington, D.C. office of Kutak Rock. The next twelve (12) years of his career he spent in in-house positions of increasing responsibility, at companies to include Merck & Co., Inc., Genetics Institute, Inc. and Wyeth Pharmaceuticals, Inc.

Werten completed his in-house career with Celera Genomics (NYSE: CRA), the biotechnology company located in Rockville, Maryland and credited with sequencing the human genome. At Celera, Werten was the General Counsel. Werten is also a retired captain in the United States Army.

Werten has served on the Board of Directors of St. Benedict's Preparatory School, Phillips Exeter Academy General Alumni Association and in 2000 was appointed by the former U.S. Secretary of Health and Human Services Donna Shalala to the Advisory Committee on Immunization Practices, to provide advice and guidance to the Secretary, the Assistant Secretary for Health, and the Centers for Disease Control and Prevention (CDC) on the control of vaccine-preventable diseases.

Werten is a graduate of Princeton University and the University of Virginia School of Law. He resides in Philadelphia. His wife Kellye Walker is Chief Administrative Officer and General Counsel of American Water Works and he is the proud father of three (3) children, Werten III (age 13), Matthew (11) and Erica (age 11).

Most of client development success is tied to one’s ability to effectively distinguish between the attributes recognized by in-house counsel as truly differentiated value attributes from those that are viewed as attributes that are merely ‘points of parity' with incumbent elite attorneys. Moreover, one must be able to 1) establish and nurture client relationships and 2) build reliable referral networks and consistently communicate their differentiated value.

This session examined what (in addition to high quality legal work) top performing attorneys do to 1) signal differentiated value with new clients and 2) build client equity with existing clients. The presentation included an interactive exercise that allowed the audience to work together to move down the path from identification of ‘client benefits’ to the presentation of ‘differentiated value.’

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General Firm

January 19, 2012: Finding Balance

12th in a Series of Personal Growth Sessions:

Featured: Karen Carr, Certified Coach, Working Family Resource Center, Since 2001 Karen’s coaching business has been dedicated to supporting individuals in creating clarity on issues for themselves, on their own terms, with the guidance of coaching. Karen is certified through the Coaches Training Institute of San Rafael, California and has a Master’s degree in Teaching from the University of St. Thomas. She graduated with a B.A. in Women’s Studies and English from the University of Minnesota - College of Liberal Arts. Karen offers one on one coaching, workshops and seminars for group and businesses on relationships, parenting, purposeful work, and women in transition. In addition to life coaching, she enjoys literature, movies, traveling, visiting with family, and hiking and tennis.

Do you spend too much time worrying? Are you putting something on the back burner of your life and you are not sure how to move it to the front burner? Take time to assess your satisfaction in various aspects of your life. Using the balance wheel as a tool, take time to ponder the possibilities! Name your desires and get on track to living your life with intention.

January 17, 2012 and More Dates: FredDOCS: Pilot Group Training

Featured: Alison Ott Knapp, Research Specialist, LexisNexis

This is for members of the FredDOCS Pilot Training Group. This training provided the basic FredDOCS system features and navigation.

January 16, 2012: MLK Day Program: Building Peace and Unity within the Global Community

Featured: Naomi TuTu, Human Rights Activist; Michael Lomax, President & CEO, The United Negro College Fund; Reverend Gloria Roach Thomas, Senior Pastor, Camphor United Methodist Church; and The Steeles, Entertainers.

This was a simulcast broadcast of the 2012 Minneapolis MLK Breakfast celebrating the life and legacy of the man and the movement that not not only changed civil rights laws for all Americans but set in motion the drive for human rights reform worldwide.

January 12, 2012: Getting and Staying Organized: Effective Work Habits for Successful Lawyers 

ALI-ABA Webinar

Featured: Meg Spencer Dixon, Esq. Meg is a consultant specializing in organization and time management seminars for lawyers and legal professionals. Ms. Dixon came to the field of organization and time management by way of a career in law, during which she practiced in the litigation and energy groups of Shaw Pittman in Washington, D.C. She received her undergraduate degree in economics from Princeton University in 1982 and law degree from Stanford Law School in 1985. In 1992, Ms. Dixon founded Spencer Consulting, and since then has been customizing and conducting seminars and providing one-on-one consulting/coaching on many aspects of organization and time management and related subjects such as project management, stress management, overcoming procrastination, conquering email overload, and how to run effective meetings. She has presented seminars for lawyers and other legal professionals at over 135 law firms, associations, CLE providers, government agencies, corporate law departments, universities, and law schools.

Ms. Dixon’s topics included:

Planning:

• Creating and Using a Bullet-Proof To-Do System: The Pyramid Approach, The Two-List Approach, and Using Microsoft Outlook for Task Management
• Juggling Multiple Projects
• Managing Non-Deadline Driven Tasks
• Painless Ways To Incorporate Planning into Your Legal Practice

Managing Information:

• Conquering Email Overload: How To Manage Your Email Effectively
• Dealing with the Paper Flow
• Filing Systems: How To Transition from Piles to Files: Project, Reference, and Tickler Files
• Good Organization Habits
• Conclusions and Challenges

January 10 and 11, 2012: Financial Planning-Helping You See The Big Picture (With Confidence)

Featured: Steve Prom, Senior Financial Advisor, Financial Concepts, Inc. Steve has over ten years of experience within the financial service industry as an investment professional managing wealth for individual families and corporate retirement plans. He provides clients with wealth planning services including conducting investment portfolio analysis and reviews, implementing individual executive financial plans, and providing retirement planning education for the employees of corporate clients. Steve received his Masters of Science in Finance from DePaul University and has an undergraduate degree from Saint Cloud State University with a concentration in Finance and Economics. Steve works with corporate plan sponsors within the Financial Concepts retirement division as a relationship manager to perform fiduciary investment reviews and provide employee education and consultations.

Did you know…. Only 42% of workers have completed a retirement needs calculation. Of that group, only 26% are confident they can reach their retirement goals. (Source: 2011 Retirement Confidence Survey by EBRI).

Fredrikson & Byron would like to help you begin planning for your retirement and has engaged Financial Concepts, Inc. to work with you to provide an opportunity to develop a personalized financial plan. The firm views this as an investment in your financial wellness and a valuable guide to make sure you’re on a successful path to retirement.

The goal for this session was to develop a financial plan – to provide confidence in achieving financial goals. Sample questions answered at the session included:

• How much should I be saving for retirement?
• Should I pay off debt, save for retirement, accumulate cash savings? What’s the right priority?
• What types of investments make sense in today’s economy? What’s right for me and my situation?
• How big of nest egg do I need to retire? And retire with a lifestyle I’m comfortable living.

November 29, 2011: The Intentional Family

11th in a Series of Personal Growth Sessions:

Featured: Rani Murdoch Zappa, M.A., Working Family Resource Center - Rani is a licensed Parent and Family Educator with a significant background in Training and Organization Development. She spent over 10 years in business developing and delivering training programs to support the goals of the business for which she worked as well as building and leading a department of training and development professionals. After the birth of her twin sons, she decided to make a change in her work life. The experience her family enjoyed in Early Childhood Family Education (ECFE) led her to return to the University of MN to study Parent Education where she received her license. Rani also holds a Master of Education degree in Human Resource Development and is nearly completed with another M.Ed. in Parent and Family Education. In addition to the Working Family Resource Center, Rani works as a Parent Educator in the Hopkins ECFE program. Rani lives in Edina with her husband and twin 7 year old sons.

Does it seem as though you are flying through life? Does it seem as though your children are growing up without you even realizing it? This program described some simple steps to bring the connectedness you are craving back into your family. Take a conscious, planful approach to your family life and it will make a difference.

November 17, 2011: Hydraulic Fracturing: Core Issues & Trends

Rocky Mountain Mineral Law Foundation Webinar

One of the highest profile and most important issues facing the oil and gas industry over the past few years has been and continues to be hydraulic fracturing. From the Eagle Ford to the Marcellus shales, controversial developments are reported in industry publications and popular media on a daily basis. This one-day workshop will provide a timely, thorough, and practical examination of this subject, as presented by practitioners, professors and other experts.

Exactly what are the technical aspects of hydraulic fracturing? What are the governing state and federal legal frameworks? What is fact and what is fiction regarding the myriad claims that hydraulic fracturing operations pose a threat to humans and the environment? What are the attendant regulatory proposals and controls – and potential impact on the industry – hanging in the balance?

This workshop examined and thoughtfully addressed each of these questions in the presentations and panel discussion. The conference began with the engineering and geology necessary to understand the technology of hydraulic fracturing, including the constituent materials used in the process. The second paper reviewed the federal statutory and regulatory framework and related federal court decisions. The state oil and gas commissions, and their rules and regulations, play an important role in these developments and were addressed in the third paper, thereby completing the description of the current legal framework and context in which the national dialogue is occurring.

The fourth paper focused on the numerous efforts by members of Congress, state legislatures, federal and state regulatory bodies, and others to regulate various aspects of hydraulic fracturing. A panel of experts concluded the program by looking at the claimed and real environmental impacts related to hydraulic fracturing and the ongoing dialogue among stakeholders.

November 15, 2011: Patent Reform: First to File Provisions

Strafford Webinar

Featured: Stephen G. Kunin, Partner, Oblon, Spivak, McClelland, Maier & Neustadt LLP, Alexandria, Va. and Brad D. Pedersen, Partner, Patterson Thuente Christensen Pedersen, P.A., Minneapolis

On Sept. 8, 2011, Congress finalized its six-year effort to reform the U.S. Patent Law System by passing the Leahy-Smith America Invents Act (AIA). The AIA represents the most significant change to the U.S. Patent Law System in decades. Perhaps the biggest change is the move from the current first-to-invent system to the first-to-file system, starting on March 16, 2013. Among the important changes under the new system are the expansion of what constitutes prior art and the elimination of the interference practice. Counsel to IP owners and inventors must carefully examine and understand the many changes that are coming as patent reform goes into effect in order to advise clients on meeting the new requirements and protecting their IP rights.

An authoritative panel of patent attorneys provided an overview of the America Invents Act and examined the first-to-file provisions, including what constitutes prior art under the new patent reform law. The panel offered best practices for patent practice under the new system including:

• America Invents Act
• Overview of changed landscape
• Effective dates for changes
• First inventor to file provisions
• What changes
• What stays the same
• Derivation practice
• Examples of how new section 102 works under the AIA

November 15, 2011: OASIS CLE Database Training

Featured: Terry Giel, Manager of Professional Development

At this session, participants learned the basics of the Minnesota CLE Board's Online Attorney and Sponsor Integration System (OASIS) database. Items covered included: login, data entry, searching, event codes and basic trouble shooting.

October 25, 2011: Ethical Issues in IP

ALI-ABA Webinar

Featured: Roberta Jacobs-Meadway, Eckert Seamans Cherin & Mellott, LLC, Philadelphia, PA (moderator); Nancy R. Frandsen, Woodcock Washburn LLP, Philadelphia, PA; Manny D. Pokotilow, Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., Philadelphia, PA; and Philip Furgang, Furgang & Adwar LLP, New York, NY

A panel of experienced IP practitioners designed this 90-minute course to answer current-day questions on ethical matters that are particular to the practice of IP law, or that potentially affect ANY attorney who addresses patent, trademark and copyright issues in the course of his or her practice. In particular, the faculty addressed concerns that arise from allegations of fraud and other misconduct, as well as publicized claims of malpractice, in an environment increasingly marked by mistrust of the profession. This audio-only course examined:

• The Patent and Trademark Office Rules of Practice. These rules are not the same as the rules regulating professional responsibility before the courts. What are the significant differences and where are the pitfalls?
• Issues of fraud and bona fide intent in the Trademark Office: what is the lawyer's duty to inquire, and what reliance can the lawyer put on the clients’ representations?
• Issues in Licensing Negotiations: candor vs. zealous representation.
• Copyright practice, questions of ownership, and who the client is--and is not!
• Patent practice and the duty of disclosure, and duties to warn.
• Termination of representation and consequences of failure expressly to terminate.

October 11, 2011: Patent Optimizer Overview

Presenter: Jonathan Grant

PatentOptimizer is a patent analysis and drafting tool designed by patent professionals to save time and enhance the quality of patent analysis and drafting. It automates tasks such as checking and comparing claims; checking terms, references and parts; and pinpoint anomalies, auto-insert part numbers, identify modifications, and so much more that can help you work more efficiently. With the recent addition of PatentOptimizer Analytics, you can evaluate a patent portfolio with ease, to a granular level.

• Check Claims - looks at the claim structure, antecedent basis and claim vs. specification term differential. Enables selective display of claim elements within claim hierarchy, capture and association of prior art reference data, user notes and bibliographic information within context of claim hierarchy.
• Compare Claims – Quickly compares claim elements, terms and phrases across multiple documents. Enables viewing of multiple claim hierarchies and fast detection of improper new matter or deleted matter.
• Analytics - Perform deep analysis of a defined set of patent documents and/or local client side application documents. Filter, rank and sort patent collections by various key data such as inventor, examiner, legal representative, assignee, class and date. Display filtered results in a running citation list that includes bibliographic information coupled with independent claim counts and total claim counts.
• Check Parts - looks at the numbering & labeling of reference figures (drawings). Detects part references across description, claims and abstract. Enables auto-insertion of part numbers into parts appearing in abstract and claims. “Insert Part Names” feature enables quick short hand notation of parts.
• Check Terms - looks at case law where the opinion defines the meaning of key terms. Import your own text file dictionary of terms into PatentOptimizer™ and it will check it against your document and report out its findings into a report that can be utilized to generate a glossary or identify potential areas of concern.
• Check References - auto generates an IDS (standard Form 1449 or EFS-Web form) and a due diligence report showing post-issuance activity (litigations, reexaminations, certificates of correction, assignments, expirations, etc.)for multiple U.S. patent citations.
• Check Measurements - checks accuracy of English to metric conversions, automatically calculates and inserts converted measurements.
• Mark Claims Wizard - does automatic claim numbering and re-numbering.

September 27, 2011: Re-Packing Your Bag: Lighten Your Load for the Rest of Your Life

Featured: David Brueshoff, Certified Parent & Family Life Educator, Working Family Resource Center. David has been working with individuals and families for more than 29 years. He holds advanced degrees in counseling, psychology, and theology; and is a Certified Family Life Educator. Currently, he is a faculty member in the Department of Child and Family Education at Concordia University, St. Paul. He is also associated with Working Family Resource Center, based in St. Paul and presents at local and national training and development events.

Where do you want to go in life and what do you need for the journey? If you have asked yourself that question, you can learn from Leider and Shapiro how to achieve your vision of the good life. They offered new strategies to determine if our possessions, relationships, work, and purpose are helping us move forward or if they are dragging us down.

September 27, 2011: Cloud Computing Demystified: Is It A Revolution or Evolution?

ABA Webinar

Featured: Stephen N. Hollman (Moderator), Principal, Business & Technology Law Group; David W. Cearley, Vice President and Gartner Fellow, Gartner, Inc.; David L. McClure, Administrator, Office of Citizen Services and Innovative Technologies; Frank H. Morrow, Associate General Counsel, Microsoft Corporation; Edith Ramirez, Commissioner, Federal Trade Commission; John P. Tomaszewski, General Counsel, TRUSTe

This timely and highly informative presentation is a singularly unique opportunity to learn from industry and governmental leaders who are recognized experts in their respective fields on the business model of cloud computing, and how to mitigate the legal risks. This panel of dynamic and truly outstanding presenters provided actionable recommendations concerning cloud computing so that your clients and your office can properly and productively assess the benefits and risks of embarking upon a cloud computing undertaking. From exceptionally knowledgeable and highly distinguished presenters, participants learned:

• the meaning and scope of cloud computing (is it a new paradigm or a buzzword?);
• the effect cloud computing is having on all levels of information technology, the benefits and risks faced by attorneys and their clients of migrating to a cloud computing platform, and how future spending trends on cloud computing will affect your clients and your practice;
• amplification of the complex legal challenges faced by attorneys and their clients in protecting the privacy and security of systems, software, and data (large portions of which are mandated by statute to remain private) when they are stored in the cloud;
• the rapidly growing use of cloud computing in the private and public sectors;
• the most effective ways for attorneys and their clients to migrate to and adopt cloud computing;
• tactics for attorneys in negotiating with vendors to have your clients' concerns addressed; and
• recommended strategies for attorneys when dealing with cloud computing vendors.

August 17, 2011: Ethical Issues in IP

ALI-ABA Webinar

Featured: Roberta Jacobs-Meadway, Eckert Seamans Cherin & Mellott, LLC, Philadelphia, PA (moderator); Nancy R. Frandsen, Woodcock Washburn LLP, Philadelphia, PA; Manny D. Pokotilow, Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., Philadelphia, PA; and Philip Furgang, Furgang & Adwar LLP, New York, NY

A panel of experienced IP practitioners has designed this 90-minute course to answer current-day questions on ethical matters that are particular to the practice of IP law, or that potentially affect ANY attorney who addresses patent, trademark and copyright issues in the course of his or her practice. In particular, the faculty will address concerns that arise from allegations of fraud and other misconduct, as well as publicized claims of malpractice, in an environment increasingly marked by mistrust of the profession. This audio-only course will examine:

• The Patent and Trademark Office Rules of Practice. These rules are not the same as the rules regulating professional responsibility before the courts. What are the significant differences and where are the pitfalls?
• Issues of fraud and bona fide intent in the Trademark Office: what is the lawyer's duty to inquire, and what reliance can the lawyer put on the clients’ representations?
• Issues in Licensing Negotiations: candor vs. zealous representation
• Copyright practice, questions of ownership, and who the client is--and is not!
• Patent practice and the duty of disclosure, and duties to warn
• Termination of representation and consequences of failure expressly to terminate

August 9, 2011: Improving Your Interviewing Skills

Presented by: Amy Klugherz, J.D., Forward Consulting. Amy is a graduate of the University of Minnesota Law School. She began her career in 1995, helping companies of all sizes start, reinvigorate or expand their business locally and nationally. She worked directly with job seekers and corporate clients in Minnesota and the Southeastern United States. Through her work she gained a reputation for conscientious representation, responsive client service and innovative solutions. She was regularly commended for her service to individual job seekers and received public recognition for her support of minority law students during her tenure at the University of St. Thomas School of Law. Amy has continued to expand and sharpen her skills through MBA, Servant Leadership and Counseling coursework.

Amy shared her expertise and experiences just in time for the upcoming on-campus season. The session also provided a refresher for those who frequently interview laterals and other candidates. Amy focused on the following important aspects of interviewing skills from the interviewer perspective:

• Effective Interviewing: What is it? What does it accomplish? How is it done? How does it compare to traditional interviews?
• Making Interviews a Valuable Tool: What information are you seeking?
• What are your key decision factors and how do you make sure to uncover them in the interview? What does that information tell you? How do you get to that information?
• How to evaluate answers: We looked at how to evaluate what is said and what isn’t said by the candidate.
• We also focused on the firm’s interview evaluation form to design questions that get to the information you’re looking for.

August 4, 2011: Terms and Conditions Sent by Corporate Clients

Featured: John Steele, Esq. Mr. Steele is formerly general counsel of Fish & Richardson and is now an independent ethics and risk management consultant. He has taught at Boalt Hall School of Law and has presented numerous programs on the topic of legal ethics. He has a B.A. from Bucknell University and a J.D. from Georgetown University Law Center.

Mr. Steele shared experiences and insights with special emphasis on quality and professional ethics. The Practice Quality Committee encouraged all attorneys to attend this important discussion.

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