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Patents: portfolio management and licensing
Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘outstanding’ US team acts for some of the world’s leading technology and pharmaceutical companies, including AbbVie, Caterpillar and Toshiba, on a broad range of IP-related matters. James Monroe and Paul Browning are part of a team that is assisting Otsuka Pharmaceutical with the management of its worldwide patent portfolio for its key products, as well as the sale and purchase of IP. The group continues to act for Toyota Motor, Toyota Motor Engineering & Manufacturing North America and Toyota Motor Sales USA in a wide array of patent and technology license agreements, research agreements with government laboratories, university licensing, and various types of complex commercial transactions involving IP, as well as advising on export control matters and giving opinions. Other recent representative matters include various freedom to operate analyses of cross-border acquisitions. Gregory Gramenopoulos heads the electrical and computer technology practice and advises Axis Communications on patent acquisition and licensing matters. In addition to transactional counseling, the team also advises on pre-litigation strategies. Boston-based Leslie McDonell takes ‘a holistic view making sure that a client’s actions in one case doesn’t create problems elsewhere in the portfolio’. William Pratt, Thomas Irving and Reston-based Anthony Gutowski are further names to note. All individuals are based in Washington DC unless otherwise stated.
Morrison & Foerster LLP’s patent group operates from seven of its US offices and fields a number of well-regarded practitioners who have strength in the biotechnology sector. It also has substantial experience acting for clients involved in electronics and nanotechnology. Otis Littlefield, who splits his time between San Francisco and London, is recommended, as is Palo Alto-based Catherine Polizzi, who has particular expertise in the life sciences field. Polizzi is assisting Genentech with IP protection, negotiating complex services, licensing and outsourcing agreements in its establishment of relationships with Chinese medical institutions and service providers. Palo Alto-based Mika Reiner Mayer and James Mullen work regularly with Gilead Sciences and are advising on its HIV patent portfolio (including conducting due diligence in connection with potential acquisitions) and its oncology patents. Peter Yim and Michael Ward are also recommended.
Weil, Gotshal & Manges LLP’s practice, led by the well-regarded Michael Epstein, advises a broad range of technology companies from various industries. It regularly advises on cross-border standalone technology and IP transactions, including patent acquisitions, licensing agreements, e-commerce agreements, and research and development collaborations, and it also handles the management of patent portfolios. Highlights saw Epstein advising Array BioPharma on a number of technology and IP-related matters, including the acquisition of two oncology drugs from Novartis. Jeffrey Osterman counts Sanofi, Eli Lilly and Intel among his clients and, in 2015, he assisted Sanofi with its $4.2bn worldwide licensing agreement with Hanmi Pharmaceutical to commercialize a portfolio of diabetes treatments, and he advised Intel in relation to its $16.7bn acquisition of Altera. Charan Sandhu and Silicon Valley-based Karen Ballack and John Brockland are also highly recommended. All individuals above are based in New York except where otherwise stated.
Baker Botts L.L.P.’s strength in IP was reinforced in 2015 when the firm welcomed a team of IP attorneys from Vinson & Elkins LLP in September and then followed this up by opening a new San Francisco office in October. The group is recommended for conducting IP due diligence in relation to M&A deals, for clients from a variety of industries. Dallas-based Bart Showalter heads the firm-wide IP practice and has particular expertise in procurement and licensing matters in the electronics, telecoms and software fields. Showalter is part of a team that has been advising Cisco Systems on various patent licensing and portfolio development matters, including numerous cross-licensing agreements with other multinational technology companies. Palo Alto-based Travis Thomas has been assisting Facebook with the development and management of its worldwide patent portfolio. Sandra Lee in New York is recommended in the biotechnology area, acting for major pharmaceutical companies in their development and management of worldwide patent portfolios. Luke Pedersen and Robert Scheinfeld, in Washington DC and New York respectively, are also recommended. New clients for the firm include Hitachi, Johnson & Johnson and Yellowpages.com.
Covington & Burling LLP has extensive expertise in the life sciences sector, and regularly assists pharmaceutical, biotech and e-health clients with strategic patent licensing matters, including development, manufacturing and marketing rights agreements. It also assists clients with IP asset and licensing due diligence regarding M&A transactions in the IT and life sciences sectors. Recent highlights include acting for Microsoft in its acquisitions of Nokia and Skype, assisting AbbVie with its R&D collaboration with Calico, and handling various other transactions for the likes of Gilead Sciences, Sanofi, and Johnson & Johnson. Life sciences expert Sarah Hoagland assisted AstraZeneca with its collaborations with Celgene and Valeant, and in its agreement with Kyowa Hakko Kirin for an exclusive option to commercialize benralizumab in Japan. John Hurvitz leads the team, which also includes Silicon Valley-based Emily Leonard, of counsel Edward Dixon, San Francisco-based Ingrid Rechtin and James Snipes. All individuals are based in Washington DC unless otherwise stated.
DLA Piper LLP (US) has a strong US and global practice in patent licensing, sales and acquisitions, patent due diligence, patent counseling and strategic patent asset management. Life sciences remains a core part of the practice, and this was further enhanced in 2015 with the recruitment of Boston-based Mike McGurk from Finnegan, Henderson, Farabow, Garrett & Dunner LLP. McGurk manages all aspects of Nanotherapeutics’ patent portfolio, including responding to US and foreign patent office actions and assisting with monetizing certain patents. He is also assisting Geneius Biotechnology build its patent portfolio in the personalized oncology therapeutic platforms space, including the identification, preparation and filing of patents covering globally. Lisa Haile is another name to note in the life sciences field, and manages the patent portfolios of Histogen and Synthetic Genomics. On the patent licensing front, Philadelphia-based Darius Gambino advised private equity firm Wind Point Partners on the patent licensing aspects of the acquisition by its portfolio company, Vertellus, of Dow’s sodium borohydride business. Silicon Valley-based Mark Radcliffe is recommended for his experience in software matters, including open-source and cloud computing. Key individuals include practice head Mark Lehberg in San Diego and Jeffrey Aronson in Silicon Valley.
Fenwick & West LLP has an impressive client list that features numerous household-name technology companies, such as Spotify, Twitter and Facebook. On behalf of these and other clients, the firm regularly handles global portfolio management issues and IP counseling. The team also has extensive experience working with leading universities and research institutes, advising globally on patent and other IP licensing issues. San Francisco-based David Hayes advises Nike on the ownership of its international IP rights, and he assists the client with domestic patent issues and technology transactions. Rajiv Patel, Robert Hulse and recently acquired life sciences specialist Daniel Becker - who arrived from Dechert LLP - are also names to note; all three are based in Mountain View. The team has worked with Twitter on patent portfolio development and strategy since 2007, filing its first-ever technology patent, and has advised on the acquisition of approximately 900 patents from IBM and various cross-licensing agreements.
Led by Kevin Gray in Dallas, the team at Fish & Richardson P.C. handles all types of IP licensing, as well as due diligence, portfolio management and strategic counseling. Boston-based Jeffrey Barclay has notable experience in building global patent portfolios, licensing technologies and assisting with litigation. The team recently advised a healthcare sector client on its global IP policy, and assisted a software and service company with its platform as a service agreement. Representative clients include Fortune 100 companies, mid-sized companies, and early-stage and venture-backed companies. New York-based Christopher Bowley is also recommended.
Foley & Lardner LLP is a popular choice for manufacturing, hi-tech and healthcare clients, and is regularly called upon to advise on the IP aspects of acquisitions and sales. IP group chair Michele Simkin, based in Washington DC, is regularly retained by life sciences clients, and assists with patent procurement and portfolio management, licensing agreements, due diligence related to IP acquisitions and sales, and freedom to operate analyses. Also in Washington DC, Pavan Agarwal has experience in licensing negotiations and portfolio management, and Andrew Rawlins is recommended in the fields of life sciences, medical devices and automotives. John Lanza in Boston has particular expertise in electronics and technology and regularly assists Google with patent portfolio development. San Diego-based transactional lawyer Richard Kaufman is also a key member of the life sciences practice and is recommended, as are Chicago-based Aaron Tantleff and Milwaukee-based Jeffrey Gundersen.
IP boutique Knobbe Martens Olson & Bear LLP handles IP matters for clients from a broad range of industries, from growing start-ups to Fortune 500 companies. The full-service practice covers licensing, transactions, IP due diligence and portfolio management, and it also handles clearance issues and brand and product line extensions. Gerard Von Hoffmann successfully built patent portfolios for medical device start-up companies Direct Flow Medical and Claret Medical. Other representative clients include Relievant Medsystems, Sienna Labs and Ulthera. The practice is based in Orange County, where Salima Merani is a key contact.
Pillsbury Winthrop Shaw Pittman LLP’s excellent reputation is built upon its expertise in a number of key sectors, including electrical and mechanical engineering, biology, chemistry and physics. In 2015, the team was strengthened further by the arrival of six key individuals from Bracewell LLP and Goodwin Procter LLP; among the new intake is the highly recommended Josh Tucker, who splits his time between Austin and Silicon Valley. McLean-based Jack Barufka co-heads the IP practice and is a key name to note for IP counseling and prosecution matters. Patrick Doody has extensive experience in due diligence and regularly counsels clients in licensing and transactional matters, patent prosecution and patent-related opinions.
Noted for its knowledge of the life sciences and pharmaceutical sectors, WilmerHale also provides notable expertise in relation to ‘shrink-wrap’ and ‘click-through’ agreements in the software arena. It also handles collaborations, licensing, and other technology and IP-related transactions. The team recently assisted a leading medical technology and service company on portfolio analysis, freedom to operate and an infringement investigation. Denver-based Benjamin Fernandez and Natalie Hanlon Leh are assisting new client Crocs with its entire worldwide IP portfolio, including IP clearance, protection strategy and risk assessment. Michael Bevilacqua, Mary Rose Scozzafava, Colleen Superko and Michael Twomey, all based in Boston, are key names to note.
Cleary Gottlieb Steen & Hamilton LLP’s patent team leverages the firm’s corporate and commercial expertise in handling complex, cross-border transactions involving the acquisition and monetization of IP assets. It has particular experience acting for technology companies and private equity firms in their acquisitions of, and investments in, start-ups. Recent work includes acting for Viking Global Investors in its investment in Adaptive Biotechnologies, and assisting América Móvil with its investment in Mobli. Google is another key client and, in 2015, lawyers from the New York office teamed up with colleagues in Brussels, Hong Kong, London and Washington DC to assist the client with its high-profile $1bn investment in SpaceX. The core IP transactional practice is based in New York, where Leonard Jacoby and Daniel Ilan are the key contacts. Lenovo Group, Medtronic and Allergan are also notable clients.
Kenyon & Kenyon LLP’s client list features household names such as Sony, British Airways and Volkswagen. New York-based Michael Lennon focuses on IP rights, technology transfer transactions, and the negotiation of patent contracts and agreements. Managing partner Edward Colbert in Washington DC and George Badenoch and Deborah Somerville in New York are among the other names recommended.
Kirkland & Ellis LLP is experience in patent licensing and portfolio management, and provides particular expertise in relation to private equity, corporate, financing and restructuring transactions, as well as patent settlement agreements. Neil Hirshman is assisting a leading semiconductor company regarding potential licensing arrangements with a number of technology companies. Gregg Kirchhoefer, Vladimir Khodosh and Matthew Lovell are also active in patent licensing transactions. All individuals mentioned are based in Chicago.
Orrick, Herrington & Sutcliffe LLP has a strong IP team with practitioners stationed across its office network, including in New York, Washington DC and across California. It regularly advises buyers and sellers on the IP aspects of mergers and acquisitions, including performing due diligence and negotiating IP terms in such transactions. Los Angeles-based James Brooks is a key name to note and successfully advised Fujitsu in a complex negotiation with a major semiconductor company regarding patents covering a wide range of technologies, from microprocessor design, to disk drives, to semiconductor processes. William Wright in Los Angeles, Steven Routh in Washington DC, Mark Wine in Orange County and Joseph Calvaruso in New York are also key contacts.
Ropes & Gray LLP’s IP practice fields a number of transactional attorneys who regularly handle M&A and restructuring transactions involving crucial IP considerations. It has been particularly active in the healthcare space, advising a number of key players in the sector. As an example, Mark Bellomy assisted Pfizer with its headline immuno-oncology collaboration with Merck. Anita Varma is acting for longstanding client Bayer HealthCare in a wide variety of IP matters, including portfolio management, licensing and due diligence relating to IP asset targets. Boston-based Edward Black co-heads the IP transactions and technology, media and telecoms practice; his clients include Dunkin’ Brands and the National Football League.
Buchanan Ingersoll & Rooney’s team, led by Patrick Keane, advises clients such as Bayer HealthCare, Tetra Pak and a number of universities. In a recent highlight, the team assisted a well-known financial services provider on the development of its worldwide IP portfolio, IP transfer and licensing, and defense against non-practicing entities. Christine Hansen and Ralph Fischer are the key names to note. The practice has a presence in Alexandria, Philadelphia, Pittsburgh and Wilmington.
Leveraging its strength in the life sciences sector, Cooley LLP’s patent team handles patent portfolio management and licensing matters for clients such as Auris Medical, Abaxis and CytomX Therapeutics. San Francisco-based Nan Wu assisted Senomyx with building its international patent portfolio, and conducted a patent due diligence review for a number of patent portfolios licensed by Ultragenyx. New York-based Ivor Elrifi is also highly recommended.
Davis Polk & Wardwell LLP regularly advises on its domestic and international clients on joint technology development agreements and strategic alliances. It advises prominent companies and institutions in a range of industries, including BioReference Laboratories, Lockheed Martin and Mercer. Frank Azzopardi heads the IP and technology group from New York, and is the key contact for IP issues arising from corporate transactions. A recent highlight was assisting Comcast NBCUniversal with the IP aspects of its acquisition of 51% of Universal Studios Japan in a recapitalization transaction. Another highlight saw Azzopardi advise PwC on its global collaboration with Google in the enterprise solution area.
Kilpatrick Townsend & Stockton’s team develops and manages patent portfolios for clients such as Terapio, SAS Institute and Belkin International. Charles Calkins is assisting PPG Industries with third-party patent analysis and counseling, strategic counseling on in-licensing and out-licensing, and the IP licensing aspects of acquisitions. Wab Kadaba heads the team from Atlanta, but it also has boots on the ground in Denver, San Francisco, Silicon Valley and Washington DC.
Jones Day’s team is most notable for handling IP matters relating to major M&A transactions. As an example, the team advised Lam Research on its $10.6bn acquisition of KLA-Tencor, and it advised City of Hope on an exclusive license granted to LA Cell, a company formed by Sorrento Therapeutics to focus on the development of cell-penetrating antibody therapies. San Diego-based Thomas Briggs and Boston-based Warren Nachlis are the main contacts.