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Licensing Aphorisms:
Making Deals in a Rule-Filled Anarchy
Legal Workshop
Thursday May 3, 2007

� 11:30 AM - 12:15 PM    Registration, Networking & Lunch
� 12:15 PM - 2:00 PM      Workshop

Nowadays, almost every Life Sciences company, large and small, needs to form alliances. Licensing is becoming more and more important. The percentage of drugs that originated in-house decreased from 80% in the 1970s to only 40% in 2000.

Licensing deals enable large in-licensing companies to strengthen their development pipelines, mitigate R&D; risk, and access optimal delivery and manufacturing technologies. Small companies often need early-stage in-licenses from universities or industry labs in order to pursue their business plans. Large companies out-license in order to leverage IP assets they otherwise would not pursue, while small companies out-license to generate capital, as a way to validate their approach for investors, and to access developmental and regulatory expertise and marketing channels.

Licensing involves many sets of arcane rules about various kinds of intellectual properties, yet when it comes to when and how to make deals, the legal rules become less important than the anarchy of the marketplace. Clout, flexibility, and attention to detail are crucial watchwords in learning how to make deals and when to walk away. The presenters will describe approaches that have worked, and not worked, for them, and there will be time for discussion.


Roger M. Tolbert, Partner, Corporate, Pacific Northwest Office, Orrick, Herrington & Sutcliffe LLP

Roger M. Tolbert leads the intellectual property contracting and licensing practice in Orrick's Seattle office. He assists clients in diverse industries with a wide range of intellectual property, contracting and alliance matters. He has acted as key legal counsel in:
  • domestic and international collaborations for developers of gene therapies, cell therapies, therapeutic proteins, pharmaceutical products, medical devices, agricultural biotech, etc;
  • mergers, acquisitions, spin-offs and asset divestitures in a wide range of industries, including biotechnology, ultrasound, health databases, educational and productivity software, entertainment, Internet browsers, e-commerce and food processing;
  • technology transactions with universities and other nonprofit research institutions;
  • manufacturing and distribution arrangements for makers of software, allergy products, food additives, and advanced paper coatings technologies, among others;
  • venture capital investments in technology-based enterprises; and
  • technical assistance agreements, clinical trial agreements, rights clearances, trademarks, employee inventions agreements, and major computer systems acquisitions for clients in diverse industries.
Mr. Tolbert is a frequent speaker and program chair at educational programs that focus on protection and exploitation of intellectual properties.

Before joining the firm, Mr. Tolbert was a partner with Perkins Coie LLP, where he co-chaired the life sciences practice group.

James W. Geriak, Partner, Intellectual Property Group, Orange County Office, Orrick, Herrington & Sutcliffe LLP

James Geriak, partner in the Orange County office, is a member of the Intellectual Property Group. Mr. Geriak began his career in the patent profession by serving as a patent examiner from 1956 to 1960 while attending law school at Georgetown University.

Mr. Geriak�s more than 100 cases as lead counsel have covered a broad range of technologies, including oil field equipment, polymers, lasers, semiconductors, medical devices and the subject matter that currently appears to be involved in so much litigation, biotechnology. In recent years, Mr. Geriak has also viewed things from the other side of the bench as a court-appointed special master, as an arbitrator, and as a mediator in mini-trials.

Mr. Geriak has been lead counsel in more than 50 reported cases. The following is a sample of his notable cases:
  • Cadence Design Systems, Inc. Mr. Geriak and a multiple-office team won a major victory before a Northern California jury for Cadence in a patent and trade secrets trial. After a four-week trial, Cadence prevailed on all counts by invalidating 3 patents at trial and defeating claims of misappropriation of trade secrets and other common law causes of action. Mentor Graphics, the plaintiff, sought close to $1 billion but got nothing. The jury trial victory for Cadence is remarkable because the court, prior to trial, had found infringement of 2 of the 3 patents that remained in the case. The jury invalidated all patents presented to them, including those subject to the court�s infringement findings.
  • Quantum Corporation. Mr. Geriak has been lead counsel to Quantum Corporation in numerous intellectual property disputes over 15 years, including its first infringement dispute involving data masked servo sector technology. In Quantum Corp. v. Western Digital Corp., Quantum Corp. v. NEC, and Quantum Corp. v. Computer Memories Inc., Mr. Geriak obtained summary judgments of patent infringement and damage awards that totaled $13 million.
  • Quickturn Design Systems, Inc. In Quickturn Design Systems, Inc. v. Mentor Graphics Corp. and Meta Systems, Inc., Mr. Geriak was lead counsel to Quickturn at jury trial in Oregon district court for infringement of patents regarding hardware emulators for semiconductor chip design verification. The case settled favorably during the plaintiff's case at trial. In Aptix Corp. v. Quickturn Design Systems, he obtained summary judgment of no antitrust violation by reason of corporate acquisitions. The judgment was affirmed on appeal Ninth Circuit.
  • General Surgical Innovations, Inc. Mr. Geriak represented General Surgical Innovations in several patent infringement cases against Origin Medsystems, Inc. regarding patents for medical devices and methods for a surgical procedure, including jury trial and verdict for General Surgical Innovations, appeals to the Federal Circuit, and subsequent favorable settlement of all matters.
  • Cannondale Corp. In Robinson v. Cannondale Corp., Mr. Geriak represented the defendant and won a successful motion for summary judgment of non-infringement of two patents-in-suit. The case is currently on appeal.
Mr. Geriak has also been lead counsel for both complainants and respondents in Section 337 actions in the International Trade Commission and has been lead counsel in over 50 patent interferences in the U.S. Patent and Trademark Office.

In addition to his trial work, Mr. Geriak has negotiated and drafted numerous patent, trademark, software and other types of technology licenses relating to, among other technologies, semiconductor chips, medical devices, lasers, polymers, electronic systems, cosmetics, and chemical processes.

Mr. Geriak testified before both Senate and House of Representatives regarding the establishment of the Court of Appeals for Federal Circuit. He also served as Special Master for U.S. District Courts, as Arbitrator, as Mediator and as mini-trial Judge in numerous patent actions.

Before joining Orrick, Mr. Geriak was a partner at Lyon & Lyon.
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