Technology and IP Transactions
Practice Leaders: Raymond A. Miller and Peter T. Wakiyama
It is hard to find a business that does not depend on intellectual property and other intangible assets for its very existence. For many companies, IP (or the products, services or technology based on it) is their stock in trade – hardware, software, the Internet and the “cloud,” e-commerce, IT and business process outsourcing, chemicals, nanoparticles, pharmaceuticals, medical imaging and other diagnostic equipment, medical devices, music and video content, and an endless list of other products and services.
Other businesses use IP and technology to design, develop, manufacture, market, sell and deliver products and services, manage personnel and other resources, bill customers and manage accounts receivable, and to keep their books. In addition, every company must be a careful steward of its brand, public image and corporate reputation.
Pepper attorneys have the broad and deep experience to help these companies succeed. We understand that IP is an asset, albeit an intangible asset, to be bought and sold, managed and exploited. We handle stand-alone IP transactions, and we collaborate with other lawyers, in-house counsel, and client teams to advance our clients’ interests in corporate M&A transactions, debt financing transactions, bankruptcy proceedings and other matters involving technology or technology companies. We know the technology, we understand the needs of companies large and small, and we represent buyers as easily as sellers. We help our clients negotiate and perform diligence relating to:
- licenses of all types and varieties covering patents, copyrights, trademarks and trade secrets
- settlement agreements resolving patent, copyright and trademark litigation
- consulting agreements
- development and joint development arrangements
- sponsored research agreements
- asset purchase arrangements including patents, trademarks, copyrightable works and other intangible assets
- outsourcing and off-shoring deals
- manufacturing and supply agreements
- OEM, distribution, reseller, marketing representative agreements
- marketing and merchandizing agreements
- e-commerce arrangements, including linking, Web store development and social networking
- government contracts and subcontracts.
We also know how to get deals done. Our recent engagements include the following:
Cloud Computing; Software as a Service, Online Data Services
- for a well-known vendor of computer security software products, negotiated to acquire businesses offering complementary products; created a full suite of end user licenses, distribution agreements and other commercial contracts; negotiated multiple OEM agreements; and counseled the client on a wide range of commercial and regulatory issues including e-commerce, privacy, export control issues
- for an established provider of telecommunications network management software, created a license agreement template, and negotiated distribution and OEM agreements
- counseled numerous clients on the safe and appropriate use of open source solutions
- drafted and negotiated license and service agreements for a supplier of information management solutions to OEMs in the automotive industry
- counseled numerous clients on U.S. export controls, including limitations on exports of embedded encryption capabilities and transactions with embargoed countries
- before a corporate merger, helped an information management software provider resolve issues created by an extensive use of open source code in its key products, and advised the provider on the use of clean room procedures.
Data and Copyrightable Content
- for a well-known supplier of online research services, created a new master agreement template for the company’s entire product line
- for a provider of online analytics services to online advertisers, negotiated multiple customer agreements, negotiated a private label marketing agreement, and drafted consulting agreements with independent software developers
- prepared license and privacy terms for the developer of a photo-sharing application used on popular social media sites
- audited a software-as-a-service company’s intellectual property position prior to launching an initial public offering of stock.
- represented a biotechnology company in a collaboration and research agreement with a government-funded entity
- for an emerging cancer biomarker company, analyzed the various ownership and intellectual property rights in aggregate data streams and data analytics products
- advised a university on its rights and responsibilities with respect to video, music downloads
- negotiated content supply agreements with major news organizations for line simulations to be used by a video gaming company
- drafted user agreements for a leading provider of online mapping software to ensure that the company retained valuable rights to use user-generated content
- advised a research center at a major university regarding the “fair use” of online video resources in its research
- advised a small liberal arts college on the proposed license of certain of its unique library holdings to an online service provider
- for a member of a consortium-based content distribution business, provided strategic advice and drafted and negotiated various agreements concerning content, devices and digital distribution.
- negotiated numerous agreements to license programming content, including linear channels and IPTV programming, from broadcasters, cable networks and other providers for distribution over the operator’s cable network and the Internet
- negotiated agreements to acquire set-top boxes and network equipment, security (conditional access) systems, and other network components
- negotiated an agreement to outsource sales of “ad avails.”
Health Care/Life Sciences
- assisted a provider of specialized phone and telecommunications systems with a wide range of issues relating the development of its next generation product, including licensing in various software products and technologies, advising the company on the safe use of open source software, and redrafting the company’s customer agreements
- negotiated agreements for telecommunications services for an operator of medical imaging centers
- for a provider of commercial telecommunications services, negotiated a dark fiber lease and equipment collocation agreement with the incumbent local exchange carrier
- for a manufacturer of handheld electronic device components, drafted form supply agreements and negotiated specific distribution agreements with global customers and vendors
- for various telecommunications providers, negotiated a strategic alliance agreement and cross license agreement for Internet widget-based software, negotiated agreements for the purchase of modems and other transmission devices, and negotiated a hosting and service level agreement for an online backup service
- assisted a VOIP service provider in negotiating a private label resale agreement.
- for a large academic medical center, assisted in the acquisition of infrastructure technology, electronic medical record system, and outsourcing of services
- for 140 imaging clinics in the United States and Canada, negotiated an integrated radiology information system and Picture Archiving and Storage (PACS) solution
- for a manufacturer of intravenous robots, assisting with the development of a global distribution system and second source manufacturing sites
- for an emerging medical health vendor, negotiating a joint venture agreement with a large telecommunication carrier
- for an inventor suing a medical imaging equipment manufacturer for patent infringement, negotiated a license agreement to settle the suit
- for the developer of an electronic medical records system, negotiated development and consulting agreements and in-bound technology licenses
- assisted a multi-office nonprofit health care center in the negotiation of an IT outsourcing arrangement
- assisted a major hospital system in the negotiation of agreements for the digitizing and hosting of literally millions of medical records.
Manufacturing and Services
- negotiated an agreement for the outsourcing of insurance application processing for an insurance broker
- reviewed a credit card processing agreement with a major retailer for a bank
- for a software as service provider, negotiated a hosting and financial data services agreement with a major financial institution.
- handled IP diligence in connection with a planned acquisition of payment processing technology by a financial services provider.
- negotiated a joint development agreement for a major producer of windows and other building glass with a chemical manufacturer to produce specialized glass coatings
- for a producer of high performance heat sinks, negotiated customer agreements, a joint venture agreement and, ultimately, an agreement to sell the company to a strategic buyer
- helped a restaurant equipment manufacturer acquire a portfolio of patents relating to cookware heating technology by (a) performing due diligence relating to chain of title, litigation issues, exclusive license arrangements, and developer agreements and (b) creating solutions for resolving the issues identified in that diligence
- drafted joint marketing agreements and trademark licenses for a major temporary storage company
- drafted and negotiated the settlement of patent litigation by an inventor against a manufacturer of restaurant equipment
- for the developer of catalysts used in petroleum refining, consulted on the impact of the Bayh Dole Act (also known as the University and Small Business Patent Procedures Act) on the client’s ability to license manufacture of the catalyst outside of the United States
- for a manufacturer of fabrics, industrial components and medical devices, negotiated multiple agreements involving the outsourcing of various functions, including human resources information processing, global B2B and B2C Web site maintenance and hosting for multiple Web sites, and e-commerce operations
- for a provider of vocational and personal human services, negotiated an agreement for the customization and hosting of an outsourced payroll and tax processing solution
- negotiated a trademark license agreement for a manufacturer of bath and home goods with a national cable television program focusing on home products
- negotiated a development and license agreement for the development of solid state generator technology for a hardware developer
- performed in-depth IP diligence for a private equity fund’s acquisition of assets relating to superabrasive materials and coatings from a multinational conglomerate corporation
- identified patents, trademarks and other intangible assets required for acquisition of an electronic switch business from a global diversified manufacturing company
- identified licensing and manufacturing opportunities available for a patent portfolio of food service equipment, where the portfolio was already subject to numerous licenses in various fields
- advised the manufacturer of high vacuum systems for thin film deposition and space simulation in the development of an IP protection plan covering patents, copyrights, trademarks and trade secrets
- advised a major designer/manufacturer of high-end children’s clothing in the negotiation of an endorsement arrangement with a Hollywood celebrity.
- for an online and televised home shopping channel retailer, negotiated a B2B e-commerce agreement for the licensing and distribution of professional sports branded merchandise, and negotiated agreements with various software vendors for strategic data center applications
- negotiated agreements for the supply and sale of gift cards and prepaid debit cards for a regional supermarket in multiple states
- negotiated a license and implementation agreement for a retailer in connection with text message technology used to consummate retail purchases and confirmations
- for a mobile technology provider in the retail space, negotiated a technology implementation agreement for the provision of geotagging technology in connection with mobile retail shopping.
Environmental Technologies and Clean Tech
- for a major urban residential property manager, negotiated a software license and services agreement for an enterprise resource planning system, and negotiated agreements for the outsourcing of various IT functions and services.
- negotiated agreements for a nonprofit licensing a groundwater remediation technology to an environmental services company
- identified actions required for a water treatment technology company to secure rights in technology developed by consultants and former employees
- helped a private equity group value and assess the scope of patents on technology designed to extend the life of existing crude oil extraction sites.
This broad and deep experience allows Pepper to start closer to the right answer® and help clients solve problems and realize business goals.