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With a particular strong standing in the life sciences and technology industries, DLA Piper LLP (US) demonstrates expertise in transactional licensing, including mergers and acquisitions, spin-offs, and asset sales, flanked by a strong due diligence track record; settlement negotiations, in particular with non-practicing entities, as well as domestic and international research and development agreements are other focus areas. The San Diego-based Mark Lehberg led advice to Qualcomm on a large number of cross-border licence agreements in the context of its $3bn joint venture with TDK. The team also assisted Geneius Biotechnology with the creation of its patent portfolio in the personalized oncology therapeutic platform space. In other work, San Diego’s Lisa Haile was key in obtaining a notice of allowance for Revolution Contraceptive from the Parsemus Foundation regarding a reversible male contraceptive. The Philadelphia-based Darius Gambino and Mike McGurk in Boston are other noteworthy practitioners. Clients also include Nanotherapeutics and the University of Texas at Austin.

IP giant Finnegan, Henderson, Farabow, Garrett & Dunner LLP excels in patent portfolio analysis and monetization and acts for a diverse client base that includes major multinationals such as Abbott Vascular, Otsuka Pharmaceuticals and LG Electronics alongside start-ups. The group is adept at negotiating and drafting agreements for business and technical collaborations, and has strong experience in handling corporate transactional work, including due diligence. Litigation settlement agreements are another key strength. Reston’s Anthony Gutowski and Washington DC’s William Pratt advised Toyota on multiple patent and technology licence agreements, including contracts with universities, research agreements with government laboratories, and commercial transactions, and non-profit institute Cognitive Research Enterprises engaged the team to assist with the licensing aspects of the acquisition of most of its IP assets. In a recent example of pharmaceutical work, the group negotiated an exclusive licence agreement for Dermavant Sciences with Portola Pharmaceuticals for the development and commercialisation of a hematologic cancer treatment. Other mandates stemmed from the chemical, robotics and electronics sectors. The firm’s deep bench also includes practice head John Paul, managing partner Mark Sweet, Doris Johnson Hines, Michele Bosch, Adriana Burgy, and Brian Kacedon, all from the Washington DC office.

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Foley & Lardner LLP acts in both research and development and transactional matters, with experience spanning licensing agreements with universities, government contracting, joint development agreements and research services contracts as well as due diligence work for M&A transactions. Practice head Michele Simkin and vice-chair Andrew Rawlins, both in Washington DC, welcomed former Ropes & Gray LLP partner Karen Mangasarian to its New York office, thereby further bolstering the practice’s biotechnological and pharmaceutical strength. Key advisers include the Chicago-based Aaron Tantleff, San Diego’s Beni Surpin and Richard Kaufman, as well as Milwaukee’s Joseph Ziebert and Jeffrey Gundersen. In addition to assisting new client Menarini Silicon Biosystems with the integration of a Circulating Tumor Cell System from Janssen Diagnostics to facilitate Menarini’s entry into the US diagnostics market, the group also represented new client Acasti Pharma in its negotiations with a leading Chinese pharmaceutical company regarding the development and commercialisation of a prescription drug. Hitachi Automotive Systems, Kraft Foods Group and Takeda are clients.

Morrison & Foerster LLP specializes in the technology, life sciences and consumer product sectors, where large cross-licensing agreements are a core area of expertise, as are litigation settlement agreements, and patent-adjacent antitrust matters. San Francisco-based practice head Michael Ward and Shannon Reaney in Palo Alto jointly assisted Bayer with licensing agreements and patent strategy development and implementation, in particular for Bayer’s Crop Science and Consumer Health Division, and a highlight from the pharmaceutical sector was the representation of Gilead Sciences regarding the licensing aspects of the development of its oncology and HIV treatment patent portfolios. On the technology side, the group advised BlackBerry on the licensing aspects of its strategic alliance with Emtek; the transaction involved the licensing of BlackBerry’s Messenger Service to Emtek to advance the Messenger’s position in the consumer market and allow Emtek to develop new Messenger-related applications and services for Android, iOS and Windows phones. The client list features Driscoll Strawberry Associates, Genentech and VMWare. Catherine Polizzi in Palo Alto, San Francisco’s Rufus Pichler and John Delaney in New York are also notable practitioners.

Baker Botts L.L.P. focuses on licensing matters in the technology sector, with strong experience in transactional work, including due diligence, and traditional licence agreements, such as multi-party research and development, distribution and outsourcing agreements. The large team shoulders an impressive caseload that recently featured advising Facebook on the development and management of its patent portfolio, including due diligence and licence negotiations for the acquisition of patent portfolios. And Cisco regularly engages the firm to negotiate litigation settlement agreements and cross-licence agreements with multinational technology companies, allowing the group to combine its litigation prowess with its counselling and negotiation strength. Ethypharm, Dell and Halliburton are also on the client roster. The core team includes Dallas-based practitioners Bart Showalter, Christa Brown-Sanford, Douglas Kubehl and Kurt Pankratz. Luke Pedersen in Washington DC and Paul Ragusa in New York are also noteworthy.

Fenwick & West LLP’s key strengths include transactional matters alongside research-oriented licensing work, with a strong focus on the biotech sector. The group’s experience spans due diligence, internal IP audits, licensing work in the context of mergers and acquisitions as well as licence agreements with universities and research institutes, including negotiations with Offices for Technology Transfer (OTT) on behalf of companies. In a recent highlight, the team assisted biotech venture GRAIL with its spin-out from Illumina and with the development of its patent portfolio, both under the lead of Jake Handy and Michael Shuster from San Francisco. Mountain View’s Daniel Becker acted for Corvidia Therapeutics and Vtesse in the development of their respective patent portfolios, partly through patent acquisition. David Hayes, also from San Francisco, has extensive experience in patent, copyright and trade mark matters and Michael Farn in Mountain View chairs the patent group as part of Rajiv Patel’s IP department. Denali Therapeutics, Halozyme and LG Display are also clients.

Kirkland & Ellis LLP’s practice encompasses a large number of sectors, with the pharmaceutical, life sciences and technology sectors generating the majority of work. Recent examples of this specialisation are New York attorney David MacDonald’s representation of Actavis in relation to its patent licence agreement with Supernus regarding an epilepsy and migraine treatment, and his advice to Teva on its exclusive development and commercialisation licence agreement with Otsuka regarding a migraine drug. Matthew Lovell, Neil Hirshman and Seth Traxler are noteworthy practitioners in the Chicago office. Other clients include Cerberus Capital Management, Intel and the Open Invention Network.

Weil, Gotshal & Manges LLP’s key area of expertise is technology transactions, but the team is also adept at assisting life sciences clients. On the corporate transactional side, the group covers licences in relation to mergers and acquisitions, joint ventures, and strategic alliances, while the non-transactional practice includes research and development agreements as well as e-commerce contracts, outsourcing transactions and professional service agreements. The firm is present in New York, where practice head Michael Epstein, Jeffrey Osterman and Charan Sandhu are based, and on the West Coast; here Karen Ballack is the main contact in Silicon Valley after John Brockland left for Hogan Lovells US LLP. Despite Brockland’s departure the group handles a large number of high-profile matters, such as advising Sanofi on the licensing aspects of its $25bn agreement with Boehringer Ingelheim through which the client swapped its animal health business Merial for Boehringer’s consumer healthcare business. General Electric, Signet Jewelers and Eli Lilly are other key clients.

Cleary Gottlieb Steen & Hamilton LLP’s practice scope includes mainly transactional work, but the group also assists with strategic collaborations, supply and distribution agreements and research and development agreements. Daniel Ilan led in advising OpenText on licensing agreements and asset divestitures related to the $1.62bn acquisition of Dell EMC’s Enterprise Content Division, involving the transfer of patents and copyrighted software. Leonard Jacoby assisted Samsung Electronics with the transfer of patents and trade marks in the context of the sale of its printer business to HP Inc. Other clients include 3M and Verizon.

Cooley LLP’s core area of expertise are transactions in the life sciences sector, with a particular focus on the pharmaceutical and biotechnological industries. The team regularly acts as an outsourced patent licensing business development counsel. Scott Talbot in Reston, Nan Wu and Mika Reiner Mayer in San Francisco and Ivor Elrifi in New York are the main contacts.

The ‘very responsive’ team at Hunton Andrews Kurth LLP is ‘willing to go the extra mile’ and has in-depth experience in technology licencing matters. Jeff Dodd and Edward Colbert, based in Houston and Washington DC respectively, direct the team which includes the ‘creative’ and ‘thorough’ Washington DC-based Ping Wang who has ‘deep understanding of drug patenting’. Other practitioners to note are Gary Abelev and Michael Lennon in New York, Shawn O’Dowd in Washington DC and Gregory Porter in Houston. In a recent highlight, the group advised Dr. Jack Arbiser and his company Natuderm on the negotiation of several licences and option agreements with pharmaceutical companies in the dermatology sector. Sean Wooden joined Katten Muchin Rosenman LLP and Michael Ye joined Morris, Manning & Martin, LLP.

Jones Day acts for a broad range of clients including large multinationals, start-ups, venture capital firms and non-profit organisations. The team demonstrates strength across the pharmaceutical, bio- and information technology, semiconductor and industrial chemical sectors. Strategic alliances, mergers and acquisitions and venture and other private equity transactions form the largest part of the practice, though litigation settlement agreements and collaborative licence agreements are also evident in the caseload. The San Diego-based Thomas Briggs and the Boston-based Warren Nachlis head the practice that also includes John Wehrli from San Diego and Joseph Melnik in Silicon Valley. ScinoPharm Taiwan engaged the firm to advise on its strategic development, manufacturing and commercialisation alliance with Baxter International regarding injectable cancer drugs. A recent transactional highlight was advising Astellas Pharma on its acquisition of Ogeda. SAP, City of Hope and Celgene are long-standing clients.

Knobbe Martens Olson & Bear LLP predominantly focuses on the biotechnology, electronics, technology and medical device sectors, but is also experienced in the aerospace, mechanical, chemical and environmental engineering industries. In recent highlight work, San Diego-based key contact Michael Fuller led advice to Pure MHC on negotiating a multi-year licence agreement with AbbVie regarding Pure MHC’s cancer target discovery process, allowing AbbVie to use the process for the development of therapeutics in the immuno-oncology sector; he also assisted Anivive Lifesciences with the analysis and licencing of patents from Karyopharm Therapeutics relating to a cancer treatment in companion animals. Eric Furman, also in San Diego, advised Stora Enso on its licencing negotiations with specialty chemicals company Rennovia in the context of their cooperation on the development of bio-based chemicals. The Irvine-based Lori Yamato heads the group.

Orrick, Herrington & Sutcliffe LLP undertakes both transactional and strategic licencing work and is particularly active in the technology sector, though biotechnological and electrical work is also present in the caseload. Daniel Yost, who jointly heads the Global Technology Transactions Group with Glynna Christian, as well as Steven Routh in Washington DC and John Bautista form the backbone of the practice. The group advised new client Tesla on the global warranties and Terms & Conditions of rechargeable lithium-ion battery Powerwall. Bautista and Yost represented Twist Bioscience in relation to multiple commercial agreements and the acquisition of Genome Compiler to facilitate Twist Bioscience’s development of digital products in the gene design space. Microsoft, Canon and Flextronics feature on the client list. Named attorneys are based in Menlo Park, except where otherwise stated.

Ropes & Gray LLP is active in the pharmaceutical, life sciences and technology sectors. The firm’s main presence is in Boston where practice head David McIntosh and Mark Bellomy are based. Silicon Valley’s Megan Baca is also noted. A major highlight was assisting Akebia Therapeutics with its $1bn collaboration licence agreement with Otsuka Pharmaceutical for the development and commercialisation of an aenemia drug treatment, one of several strategic licence agreements that the client entrusted the practice with. In other work, Edward Black led in advising investment managing firm Tudor Investment on a collaboration agreement with an engineering firm in the field of artificial intelligence to advance trading strategies. Other clients include AMAG Pharmaceuticals, Lantheus Holdings and TPG Capital. James McGraw joined Gray Reed.

WilmerHale focuses on domestic and international transactional advice in the technology sector, acting for both licensors and licensees, with strategic collaborations and research transactions being other main strengths of the team; further industry expertise includes computer software, biotechnology and pharmaceutical work. Boston’s Michael Bevilacqua is the main contact.

Fish & Richardson P.C.’s caseload includes licensing strategy development as well as transactional work, mainly in the technology sector. The team acts for a broad range of clients, including large multinationals, university research institutes and start-ups. The key licensing expert is Kevin Gray in Dallas.

The ‘responsive’, ‘consummate professionals’ at Goodwingo the extra mile’ and are experts in the technology and life sciences sectors. The team assists with transactional work, including joint ventures, strategic alliances and collaboration agreements, as well as with research and development agreements, and various commercial contracts. Stephen Charkoudian and Kingsley Taft are the key players in Boston. Sarah Solomon from the San Francisco office is ‘a recognized leader’ with an ‘extraordinary knowledge’. In addition to advising Warp Drive Bio on a strategic collaboration with Roche on antibiotic development, the group represented alternative energy player Plug Power in relation to a licence agreement covering stationary power products. ImmuNext, Delinia and Royalty Pharma are also clients.

Latham & Watkins LLP excels in matters on the intersection between the life sciences and technology sectors and demonstrates strong experience in cross-licencing work and joint development agreements, but also in transactional mandates, including due diligence and other licencing aspects of mergers and acquisitions. Life sciences licensing chair Judith Hasko in Silicon Valley is the main contact, with key support coming from Christopher Hazuka, also in Silicon Valley, and San Diego’s Steven Chinowsky. The team advised Allergan on a collaboration agreement with Editas Medicine regarding gene editing therapies for ocular diseases, and assisted a major pharmaceutical player with its strategic alliance with a foreign start-up regarding population genomics research. Guardant Health, Arista Networks and Roxane Laboratories also feature on the client list.

Morgan, Lewis & Bockius LLP predominantly covers the technology, life sciences, electronics, mechanical and software sectors. Randall Sunberg in Princeton and Rahul Kapoor in Palo Alto jointly lead the practice, with Kapoor shouldering a heavy portion of the caseload. SanDisk engaged the group to advise on the patent licencing aspects of its joint venture with Toshiba and Panasonic in the SD flash card space, including non-assert agreements and standard essential patents. The team also assisted Jazz Pharmaceuticals with its development, manufacturing and commercialization licence agreement with German pharmaceutical player XL-protein in relation to a leukemia treatment. Other clients include Sandvik Coromant and Yandex.

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