High-Stakes IP in Bankruptcy: Identifying, Valuing, and Protecting Assets Before They’re Lost

Christine H. McCarthy | Barnes & Thornburg LLP

As former leader of Barnes & Thornburg’s Patent Practice Group, Christine McCarthy has extensive experience managing diverse client expectations for patent portfolio management and growth. She has worked extensively in private, government and legal-services sectors. Her globally based and invested clients benefit from her counsel on virtually all aspects of intellectual property in particular, global strategic portfolio procurement and management, standards essential patents and patent licensing.

Christine believes that trust is key in the client relationships she establishes and cultivates. Because of that, clients rely on her honesty and tenacity to do her job – protecting their ideas, innovations and creative works – so they can do their jobs building their companies, brands and marketplaces. Her clients value both her candor and collaborative nature in helping determine the most effective and efficient tactics to protect their IP rights.

As her clients’ business partner, she focuses on identifying and circumventing the obstacle to IP portfolio growth and process management. With a reputation for identifying strategic solutions to even the most challenging questions, her solutions often solve the client’s problem at a reduced cost and time commitment. Her objective is to listen, learn and find the root of the actual issue or what’s at stake, and then move toward the appropriate solution.

As an electrical engineer with a focus in physics, Christine primarily concentrates her representations on technology areas of artificial intelligence, automated driving, electric and personal mobility technology, mobile and telecommunications, wireless infrastructure and applications, software and computer-related inventions, business methods, information technology, financial services, cryptography, semiconductors and additive manufacturing, electronics, bioinformatics, optics, and internet-related, block chain implemented, and e commerce and m-commerce inventions. Using her knowledge of environmental engineering, Christine also enjoys helping protect innovations in alternative energy, energy and power related technologies for further improving energy generation, distribution, and consumption efficiency.

Christine’s practice focuses on providing strategic counsel for newly formed or acquired companies on market-shifting or highly innovative technologies. Her experience encompasses evaluating, creating and implementing corporate IP programs, conducting IP due diligence and audits in connection with IP portfolio building and inventories, and developing and implementing aggressive patent ling strategies. Christine is also experienced at complex patent prosecution, handling patent enforcement issues including licensing and litigation; negotiating and drafting high-tech agreements relating to patents, knowhow and branding; rendering opinions concerning the infringement, validity and enforceability of patents; and handling IP aspects of employment issues.

Christine has particular strength regarding intellectual property and government contracts issues, in particular, with U.S. export-controlled technology, having previously worked in technology transfer with the Department of Energy and Department of Defense. She regularly counsels and represents clients interested in licensing technology to or from the United States government.

Christine publishes and speaks regularly on IP-related subjects to various societies and interested business groups.

Noor Al-Banna | Ocean Tomo, a part of J.S Held

Noor Al-Banna, CFA, CLP, CVA is a Senior Director in the Management Consulting and Valuation practice of Ocean Tomo, a part of J.S. Held. Noor’s experience includes valuation, strategy, and transaction advisory assistance to companies, investors, and governments in a variety of industries including life sciences, energy and climate tech, sustainable materials and production, software, and retail, among others. Noor’s analyses have been used to support investment decisions, capital raises, IP monetization, M&A, bankruptcy & restructuring, IP licensing, JV formation, litigation, and tax matters. Noor’s valuation experience includes significant experience with the valuation of intangible assets including patented and unpatented technology, brands, software, data, and other intellectual property assets.

Daniel Principe | Ocean Tomo, a part of J.S Held

Daniel Principe, CLP joined J.S. Held in March of 2022 as part of J.S. Held’s acquisition of Ocean Tomo. Daniel is a Director in the Management Consulting and Valuation practice of Ocean Tomo, a part of J.S. Held. Daniel provides strategy, valuation, and transaction advisory assistance to public and private companies in a wide range of industries including internet technology, energy, life sciences, telecommunications, aerospace, and retail among others. Daniel’s analyses have been used to support IP monetization, M&A, divestitures, bankruptcy & restructuring, IP licensing, JV formation, litigation, financial reporting, and tax matters. Daniel has significant experience with the valuation of intangible assets including patented and unpatented technology, brands, software, data, and other intellectual property assets.

I. The role of IP in bankruptcy | 1:00pm – 1:10pm

II. Definition of intellectual property under the bankruptcy code | 1:10pm – 1:20pm

III. Traditional and emerging forms of IP | 1:20pm – 1:30pm

IV. Identifying and valuing IP assets prior to and during bankruptcy | 1:30pm – 1:45pm

V. Critical Issues in IP license agreements | 1:45pm – 2:00pm

Break | 2:00pm – 2:10pm

VI. Sales of IP assets (including various mechanisms including under Section 363) | 2:10pm – 2:20pm

VII. License rights and protections under Section 365(n) | 2:20pm – 2:30pm

VIII. Common intra-and-intercompany licensing arrangements | 2:30pm – 2:40pm

IX. Assumption and assignment of IP agreements | 2:40pm – 2:50pm

X. Influential case law shaping IP and bankruptcy | 2:50pm – 3:00pm

XI. Strategic tools for asset optimization and monetization| 3:00pm – 3:10pm