Hailed as ‘the utmost trusted advisors’, the group of attorneys at DLA Piper LLP (US) operates as an ‘extension of the in-house team’ with superb licensing expertise, which is ‘only matched by their business practicality’. Leading life sciences, manufacturing and technology companies rely on the group’s high level of expertise for the licensing components of major transactions, its solid skills negotiating settlement agreements, and its stand-alone licensing practice. Additionally, the firm’s global footprint provides the US licensing team with excellent capabilities to manage cross-border work. The practice is led in conjunction from San Diego, Silicon Valley and Boston by Mark Lehberg, global co-chair of the firm’s commercial contracts practice; Victoria Lee, who co-chairs the firm’s technology sector group; and Larissa Bifano, who steers the patent prosecution team, respectively. The San Diego-based Lisa Haile, who is skilled at handling mergers and acquisitions in the life sciences space as well as in strategic counseling for comprehensive life sciences patent portfolio management, is another key name.
Patents: licensing in United States
Other key lawyers:
‘This team is like an extension of the in-house team. They understand our business as well as we do. Their deep licensing/IP knowledge is only matched by their business practicality. They are the utmost trusted advisors.’
Synthetic Genomics, Inc.
CuraSen Therapeutics, Inc.
Personal Genome Diagnostics (PGDx)
Sanofi S.A., Sanofi-Aventis US LLC, and Sanofi-Aventis Recherche and Development
QUALCOMM Incorporated (NASDAQ:QCOM)
- Advising Delfi Diagnostics on patent matters for both exclusively in-licensed technology from Johns Hopkins University as well as on the development of a patent portfolio for the company.
- Advising Personal Genome Diagnostics (PGDx) on strategic patent matters of patents in-licensed from Johns Hopkins University and Memorial Sloan Kettering in NYC.
- Assisting a global technology company with the drafting and negotiation of a strategic long-term patent and technology license.
Fenwick & West LLP
Fenwick & West LLP‘s specialist expertise in the technology industry makes the practice a preferred choice for large international corporations, start-ups, and emerging companies. The solid team assists with counseling, drafting, and negotiating technology transactions and related agreements. The group’s presence in large transactions is a distinctive feature of the practice, of late it advised in connection with OSIsoft´s $5bn acquisition. The practice also has extensive experience with university and research institute licensing, representing numerous organizations on a variety of licensing issues. San Francisco-based partners Jennifer Stanley and Jonathan Millard, together with Mountain View’s Michael Farn, helm the group. Additional key expertise is brought in by Stephen Gillespie and Jake Handy, both of whom operate from the San Francisco office; and Mountain View’s David Hayes, a prominent name in the market for technology transactions, who earns praise for being ‘the zen master of complex IP/technology licenses’. The group further reinforced its ranks in November 2021 with the arrival of Rufus Pichler from Morrison Foerster.
‘David Hayes is the zen master of complex IP/technology licenses. Nothing rattles him, and his advice is practical and efficient.’
The Gearbox Entertainment Company
- Supervised all IP issues in connection with the acquisition of client OSIsoft by FTSE 100 company Aveva Group plc (a subsidiary of Schneider Electric) for $5bn.
- Advised on all IP and technology aspects of Bill.com’s $2.5bn acquisition of Divvy and its $625m acquisition of Invoice2go.
- Represented Metagenomi in a multi-year strategic research and development collaboration with Moderna Inc. that is designed to develop curative therapies for patients with serious genetic diseases, using Metagenomi’s novel gene editing tools and Moderna’s mRNA platform and delivery technologies.
Goodwin‘s practice continues to attract attention in the market, especially for its prowess in complex licensing agreements for a solid technology and life sciences client base. Its bench of skilled attorneys, which was further reinforced in November 2021 with the arrival of a new California-based partner Beni Surpin, who joined from Foley & Lardner LLP, is led by technology expert James Riley, and Catherine McCarty, whose main expertise falls within the life sciences sector. They co-steer the team from Silicon Valley and Boston respectively. The group assists clients through all stages of growth, by evaluating, structuring, drafting and negotiating licenses, collaborations and other strategic technology transfer transactions across a variety of technologies. It is also well known for handling the licensing aspects of financings, including public offerings, and M&A transactions. Additional expertise in the biotechnology market is brought in by Kingsley Taft, who operates from the Boston office, where technology, data and IP expert Stephen Charkoudian is also based. Washington DC’s Noelle Dubiansky, who represents biotechnology, pharmaceutical, medical device, and other life science companies in a wide range of mandates, is another name to note.
Spring Works Therapeutics
- Advising Moderna on its $500m and $1.34bn underwritten public offerings, its proprietary mRNA-based Covid-19 vaccine candidate, and several collaborations connected to the vaccine pursuit, for example on the expansion of its collaboration with Merck to develop and commercialize novel personalized messenger RNA cancer vaccines and on Moderna’s agreement with the Ministry of Health, Labour and Welfare of Japan and Takeda Pharmaceutical to purchase and distribute 50m doses of Moderna’s vaccine candidate against Covid-19.
- Advised RBC Bearings on its $2.9bn acquisition of the DODGE mechanical power transmission division of ABB Ltd.
- Advised Surface Oncology on its agreement with GSK to exclusively license worldwide development and commercial rights to Surface Oncology’s preclinical program SRF813.
Boasting a sturdy footprint in key global technology centers and commercial markets and therefore able to navigate mandates both in the United States and globally, Jones Day's licensing and technology transactions group advises on the development, acquisition, transfer, and exploitation of technology and IP assets through commercial transactions. The group's expertise includes licensing, strategic alliances, collaboration agreements, joint development, M&A and joint ventures. Recent work highlights include advising Skyworks Solutions in connection with its acquisition of the Infrastructure and Automotive business of Silicon Laboratories in an all-cash asset transaction valued at $2.75bn. The practice, which is jointly led by Joseph Melnik in Silicon Valley and Anthony Insogna in San Diego, has garnered an excellent reputation in the market, particularly for its expertise in transactions in the high-tech, biotech and pharmaceutical industries. Several of the group's attorneys have scientific or business degrees under their belt. Warren Nachlis and Scott Lyne in New York; and Ka-On Li in Silicon Valley are among the key names of the department.
Shanghai Junshi Biosciences Co., Ltd.
SK Innovation Co., Ltd
Skyworks Solutions, Inc.
Trustwave Holdings, Inc.
- Advised Skyworks Solutions in connection with its acquisition of the Infrastructure and Automotive business of Silicon Laboratories, in an all-cash asset transaction valued at $2.75bn.
- Represented Junshi Biosciences in its license-out of technology and IP related to an anti-PD-1 antibody known as Toripalimab and options for two other molecules.
- Advised SK Innovation and SK Battery America in connection with the settlement of their US patent dispute with LG Chem Ltd. involving lithium-ion battery technology used in electric vehicles.
The Silicon Valley-based Judith Hasko helms the practice at Latham & Watkins LLP. Regarded by clients as the firm's ‘ideal ambassador’, Hasko is widely recognized for her prowess in negotiating, structuring and executing strategic licensing alliances, joint ventures and other technology and intellectual property-based transactions for life sciences companies. The workload showcases a particular strength in matters related to pharmaceuticals, biologics, medical devices, gene therapy, diagnostics, nutraceuticals, cosmeceuticals, and agricultural products. The practice also offers significant experience in technology-related matters; a strong national footprint across the West and East coast; as well as a wide global presence.
‘Strong negotiators, balancing risk with pragmatism.’
‘Judith Hasko is the ideal ambassador for L&W’.
Neumora Therapeutics, Inc.
Nestlé Health Science
Puma Biotechnology, Inc.
Neumora Therapeutics, Inc.
Mereo BioPharma Group plc
The robust practice at Morrison Foerster offers deep expertise spanning the full range of technology transactions, from patent and technology licensing and acquisitions, joint ventures and joint development projects, to strategic alliances, M&A-related tech transactions, distribution and supply agreements, and global outsourcing projects. In addition, the firm has developed subsector specialty groups in key disruptive technology fields, which makes them a preferred choice for semiconductor, software technology and life sciences clients as well as for blockchain, fintech, AI and virtual and augmented reality players. The practice enjoys a wide geographical footprint, and is led by Aaron Rubin from San Francisco. Working alongside him in this office are William Schwartz, Justin Haan, and Tessa Schwartz, who garners praise for her ‘good knowledge of how matters play out’. Stephanie Sharron in Palo Alto, and New York-based of counsel, Anthony Ramirez, are other names to note. Former partner Rufus Pichler left the firm in October 2021.
‘Tessa Schwartz has a good knowledge of how matters play out.’
Main Post Partners
Unity Software Inc.
Earning plaudit for its ‘breadth of subject matter expertise and responsiveness’, and for offering ‘excellent legal advice’, Orrick, Herrington & Sutcliffe LLP‘s team houses a solid track record of good performances across a variety of disciplines, primarily licensing-driven commercial agreements and licensing-related litigation, with the busy transactional practice a further asset. The group has continued to expand its nationwide presence in 2021, further strengthening the ranks of its New York office with the arrival in March 2021 of partner Daniel Forester from Davis Polk & Wardwell LLP. It continues to be jointly led by Silicon Valley’s Daniel Yost and San Francisco’s Sarah Schaedler, whose arrival in 2020 reinforced the team’s capabilities when handling the licensing and data privacy aspects of corporate transactions, as well as when advising private equity funds and other clients on their investments in tech & innovation-driven companies. Senior associate Ramin Tahidi, also based in San Francisco, is also noted.
‘Very good availability, short response times, excellent legal advice: Sarah Schaedler.’
‘Breadth of subject matter expertise and responsiveness.’
‘Professionalism and expertise.’
‘The lawyers working with us were smart, savvy, wise, insightful and deeply caring about our wellbeing.’
‘Their services were outstanding in every respect.’
Occidental Petroleum Corp.
Motorola Solutions, Inc.
United States Tennis Association
- Advised Workday on its acquisition of Zimit, one of the only configure price quote (CPQ) solutions built specifically for services industries.
- Advised the United States Tennis Association (USTA) on the launch of its 2021 US Open Tennis Championships NFT (non-fungible token) collection.
- Advised Turn/River Capital, a San Francisco-based private equity firm that specializes in growth capital investments, founder liquidity, buyouts, spin-outs and recapitalizations of technology, web and SaaS companies, in various strategic transactions.
With over three decades of experience advising on technology and IP transactions under his belt, New York's Michael Epstein, who has lately advised on a number of global pharmaceutical deals and private equity investments in emerging technologies, heads the dedicated team at Weil, Gotshal & Manges LLP. The renowned practice shoulders a significant workload consisting of independent licensing work, and matters involving the patent aspects of M&A, private equity, financing and restructuring transactions. New York duo Charan Sandhu and Jeffrey Osterman, and Karen Ballack in Silicon Valley, complete the group which, in addition to boasting strong cross-border capabilities, is also well known for its prowess in assisting with research and development collaborations, licensing agreements, co-marketing arrangements, outsourcing transactions, professional services agreements and e-commerce agreements. The department's client roster includes names from the technology, life sciences, electronics and software sectors.
Allego Holding B.V.
Bain Capital Private Equity
Churchill Capital Group
Eli Lilly and Company
Fortress Investment Group
The Gores Group
Maxim Integrated Products, Inc.
MGM Resorts International
Micron Technology, Inc.
NPC International Inc.
The Progeria Research Foundation
Providence Equity Partners
SumUp Payments Limited
- Advised Eli Lilly and Company on the technology & IP aspects of its up to $1.25bn research and collaboration agreement with MiNA Therapeutics, Ltd.
- Advising Bio-Rad Laboratories in connection with its global patent cross-licensing and covenant not to sue arrangements related to microfluidic genetic analysis technology and single-cell genomics, including several related patent sublicense arrangements, on the technology & IP aspects of the settlement of its protracted worldwide legal battles with 10x Genomics.
- Advising Halozyme Therapeutics on a global collaboration and license agreement with ViiV Healthcare.
The licensing practice at Baker Botts L.L.P. appeals to clients for being ‘unusually adept at creating business-savvy licensing frameworks & agreements’, and garners additional praise for feeling ‘comfortable doing things in a new way’. With life sciences, technology, electronics and education as the main sectors of focus, the group is well known for handling a variety of licensing agreements, encompassing cross-border contracts for the acquisition or disposal of portfolios, the research and development of new technologies, and outsourcing agreements, for products and services in the US and abroad. The group is also well versed in transactional work, and the proximity with the firm's litigation team reflects on the practice's caseload. Robert Scheinfeld chairs the group from New York, with Christa Brown-Sanford in Dallas acting as deputy chair. Luke Pedersen in Washington DC and ‘exceptional licensing attorney’ Margaret Sampson in Austin are other names to note.
‘The team is unusually adept at creating business-savvy licensing frameworks & agreements. They listen, think creatively, push back appropriately, and are comfortable doing things in a new way.’
‘Margaret Sampson is an exceptional licensing attorney.’
Cisco Systems, Inc.
University of Pennsylvania
Memorial Sloan Kettering Cancer Center
Enghouse Interactive (UK) Ltd. and Vidyo, Inc.
CMC Materials f/k/a Cabot Microelectronics Corporation
Mastercard International Incorporated
Medical Technology Company
FUJIFILM Cellular Dynamics, Inc.
- Serving longtime client Cisco as primary outside counsel for patent licensing, strategic portfolio development, defensive patent analysis, and overall counselling and patent strategy.
- Advised Dell Technologies on a wide range of patent matters.
- Assisting Columbia University with the development and management of its worldwide patent portfolio that is directed to a wide range of physical and life sciences technologies.
Finnegan, Henderson, Farabow, Garrett & Dunner LLP's sizable practice comprises recognized authorities in the field such as Washington DC's Brian Kacedon who has a wealth of expertise handling the licensing aspects of transactions, in drafting and negotiating license and collaboration agreements in addition to having litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Managing partner Anand Sharma and chair Mark Sweet, both also based in DC, are at the helm of the practice, which covers a variety of industries, with pharmaceutical, medical device, software, and consumer electronics as its mainstays. The firm enjoys a well-established footprint in the US thanks to its offices in Reston, Palo Alto, Boston, and Atlanta, as well as a significant international presence with offices in London and four hubs in Asia, which makes the team a solid choice for matters with a cross-border component.
Other key lawyers:
Asetek Danmark A/S
Bausch Health Companies Inc.
BrainScope Company, Inc.
Eisai Co., Ltd.
- Advising on portfolio development and licensing as well as patent and trademark prosecution services for ONWARD Medical.
- Assisting CSL with due diligence investigations regarding the strength of IP and freedom-to-operate related to potential acquisitions.
- Assisting Megagon Labs with developing its patent portfolio directed to cutting edge AI technologies and assisting with open-source licensing matters.
Kirkland & Ellis LLP‘s extensive track record acting for licensors and licensees alike nourishes the practice with strong capabilities to negotiate mandates with a deep understanding of both perspectives. In addition to negotiating license agreements, the group is well versed in other commercial arrangements that are often implemented alongside of patent licensing deals, including joint development agreements, supply agreements, and service and technical assistance agreements. The team offers additional expertise in the development and implementation of patent licensing programs, often by way of corporate transactions. Key practitioners include David MacDonald in New York, who has a focus on pharmaceutical and biotechnology companies; Chicago-based trio Russell Levine, Adam Petravicius, and Seth Traxler, who leads the technology & IP transactions practice; and Shellie Freedman in New York, whose background in molecular and cell biology provides her with additional insight into life sciences transactions.
Other key lawyers:
David MacDonald; Russell Levine; Adam Petravicius; Seth Traxler; Shellie Freedman
Open Invention Network
- Advised Eli Lilly (NYS: LLY) and its wholly-owned subsidiary, Dermira, on an outbound license agreement with Evommune to develop and commercialise three development programs for the treatment of various inflammatory diseases.
- Advised Eli Lilly (NYS: LLY) on its collaboration and patent license agreement with Kumquat Biosciences.
- Representing Open Invention Network in patent counseling matters for Linux patent pool.
Spread across offices the firm's offices in Philadelphia, Silicon Valley, Boston or Chicago, Morgan, Lewis & Bockius LLP's practice has built a stellar reputation for its prowess handling domestic and international technology transactions, primarily outsourcing transactions, and is a preferred choice for semiconductors, software, electronics, engineering and life sciences clients. Business method and e-commerce patent licensing agreements are other areas of expertise. The large practice comprises a bench of deeply experienced practitioners, including Louis Beardell in Philadelphia; Pittsburgh’s Peter Watt-Morse; life sciences specialist Benjamin Pensak in San Francisco; and Silicon Valley duo Dion Bregman and Rahul Kapoor. Additionally, through representations and local partnerships, the firm routinely advises companies desiring to operate in Japan, China, and India, as well as Asia-based global companies expanding into the United States. The group was in charge of representing Takeda Pharmaceutical in its agreement with Moderna and Japan’s Ministry of Health, Labour, and Welfare to import and distribute an additional doses of Moderna’s COVID-19 vaccine in Japan.
Eli Lilly & Co.
National Comprehensive Cancer Network
- Represented Cyclerion Therapeutics in a licensing agreement with Akebia Therapeutics for the development and commercialization of praliciguat, an oral soluble guanylate cyclase (sGC) stimulator.
- Represented Takeda Pharmaceutical in its agreement with Moderna and Japan’s Ministry of Health, Labour, and Welfare (MHLW) to import and distribute an additional 50 million doses of Moderna’s mRNA COVID-19 vaccine in Japan.
- Represented Eli Lilly in its license, development, and commercialization agreement with Asahi Kasei Pharma Corp.
Praised for its ‘very strong knowledge’, Ropes & Gray LLP is the firm of choice for a number of large pharmaceutical companies, multiple biotech startups, and investors, while also acting for well-known names form the technology space. Particularly renowned for its expertise advising on research collaboration agreements -frequently including cross-border components-, and commercialization license agreements, the team is co-headed by Megan Baca in Silicon Valley and Melissa Rones in Boston, the firm’s main patent licensing center. Additional key expertise in the Boston office comes from former practice head David McIntosh and life sciences expert Hannah England, who has a particular focus on licensing and collaboration transactions, as well as on asset acquisitions and divestitures.
‘Very strong knowledge. Everyone in the team communicates very effectively, is highly responsive and collaborative.’
‘Impressive ability to extract and distill key issues from complex agreements and assist with negotiations. Megan Baca stands out in this area.’
‘Ropes & Gray does an exceptional job on multiple fronts – corporate, transactional and litigation.’
‘David McIntosh is top. Along with other partners they truly are external members of my in-house legal department. Just awesome!’
CANbridge Biomed Limited
Coherus BioSciences, Inc.
CStone Pharmaceuticals Co., Ltd.
iTeos Therapeutics, Inc.
Sarepta Therapeutics, Inc.
Takeda Pharmaceutical Company Limited
Blueprint Medicines Corporation
uniQure Biopharma B.V.
Upsher-Smith Laboratories Inc.
Shape Therapeutics, Inc.
Sunovion Pharmaceuticals Inc.
- Represented Novavax in connection with the negotiation of multiple agreements related to the development and supply of its proprietary COVID-19 vaccine to international organizations and nations around the world.
- Assisted CStone with a global strategic partnership with biotech EQRx to out-license two late-stage immune checkpoint inhibitor therapies for development and commercialization outside of Greater China.
- Advised Shape Therapeutics in a strategic research collaboration and license agreement with Roche worth up to $3bn.
Cleary Gottlieb Steen & Hamilton
A New York-based duo comprised of David Herrington, who brings to bear his extensive experience handling intellectual property disputes, and Daniel Ilan, who offers solid expertise in patent licensing, acquisitions and sales, and patent settlement agreements, steers the practice at Cleary Gottlieb Steen & Hamilton. The team is particularly well known for large licensing transactions for leading clients, particularly from the technology sector. Google, 3M and SONY stand out among the client roster. The team is also adept at handling cross-border mandates, most recently in Japan and France, working seamlessly with the firm's international offices.
Global Healthcare Exchange
International Flavors & Fragrances
MSD Animal Health
- Represented longtime client International Flavors & Fragrances (IFF) in patent licensing matters related to its $45.4bn merger with DuPont’s Nutrition & Biosciences (N&B) business in a Reverse Morris Trust transaction.
- Advising ArcelorMittal on patent licensing matters related to its sale of 100% of the shares of ArcelorMittal USA to Cleveland-Cliffs for a combination of cash and stock.
- Advised Alphabet/Google in the IP aspects of a number of transactions where analysis of patent license issues was a key element of the transaction, including its acquisition of Fitbit.
Clients appreciate Dickinson Wright PLLC’s ‘knowledge grounded in experience’. The practice's roster includes patent attorneys who have previously worked as engineers, while most have worked in-house, which gives the group a good understanding how licensing arrangements arise within a business. The team advises clients from a variety of industries, including technology, real estate, automotive or education, covering a range of licensing matters such as software licensing, technology licensing for universities, cross-licensing to resolve disputes, and traditional patent licensing. Richard Jones in Troy, Michigan, chairs the group, closely supported by Lance Anderson in Austin, who is experienced in technology and IP focused transactions, as well as in handling the technology aspects of mergers and acquisitions, joint ventures, and other commercial transactions.
Other key lawyers:
‘The talents of the team include significant personally responsible experience guiding a well-known R&D university’s patent portfolio (heavy in agriculture and pharmaceuticals) from disclosure through US and foreign patenting to successful licensing, utilizing significant skill at both ends of the process (working with the professoriate through difficult and contentious patent licensing negotiations).’
‘I favor their ability to work with IP owners with little knowledge of the process from beginning to end, explaining to the sophisticated as well as those not so knowledgeable, the choices and the best choices for forward motion. I appreciate their knowledge grounded in experience.’
Nippon Telegraph and Telephone Corp.
- Represented MRI Software in its acquisition of the Jenark solution from CoreLogic, Inc.
- Handling licensing negotiations with a number of companies on behalf of NTT and its exclusive licensee, Essential WiFi, LLC.
The ‘outstanding’ Salima Merani, who operates form Orange County, is one of the key contacts at Knobbe Martens Olson & Bear LLP‘s extensive licensing practice. She brings to bear her more than 20 years of experience handling the development and commercialization of patent portfolios for life sciences companies, particularly medtech and biotech companies. The department’s expertise also spans licensing agreements in the context of financings and transactions, mainly in the venture and growth capital space, which also amount for a portion of the workload. Irvine-based partners Jason Gersting, who acts as practice co-head, and Terry Tullis are other names to note.
Other key lawyers:
Salima Merani; Terry Tullis
‘Knobbe Martens knows how to structure a license agreement, eliminates later show killers and therefore secures at an early stage the highest possible value proposition for later stage deals. This is especially true in VC-driven deals.’
‘Salima Merani simply knows how to do it. She is outstanding.’
Personal Genome Diagnostics Inc.
ICU Medical, Inc.
Agilent Technologies, Inc.
Vensana Capital Management, LLC
Cala Health, Inc.
CyDex Pharmaceuticals, Inc.
Aligos Therapeutics, Inc.
- Represented Wright Medical in Stryker’s acquisition of Wright Medical for $4bn.
- Assisted Imperative Care to help raise $260m to advance innovations that elevate stroke care.
- Assisted Nkarta’s negotiations in a successful deal with Crispr Therapeutics.