DLA Piper LLP (US) combines strong licensing expertise in transactions with longstanding experience in settlement agreements and a stand-alone licensing practice covering biotechnology and other emerging technologies. Universities and other research institutions frequently rely on the group for the licensing aspects of joint ventures, collaborations, and spin-offs. As part of one of the world's biggest law firms, the US licensing team offers impressive cross-border clout, a major plus for the group's many prestigious national and international clients. The automotive, technology, life sciences, and retail sectors account for a substantial part of the caseload. The trio at the helm of the practice consists of San Diego's Mark Lehberg, the global co-chair of the firm's commercial contracts practice; Silicon Valley's Victoria Lee, who co-chairs the firm's technology sector group; and Boston's Larissa Bifano, whose patent prosecution team complements the licensing practice nicely.
Patents: licensing in United States
Mark Lehberg; Victoria Lee; Larissa Bifano
Other key lawyers:
Lisa Haile; Jeffrey Aronson; Lauren Murdza; Matthew Satchwell; Paul Steadman
‘Their flexible and creative negotiation capability is impressive.’
‘Matthew Satchwell has great experience in representing international clients and always handles matters very efficiently. His flexible negotiation style is especially great.’
Qualcomm, Inc. / Qualcomm Technologies, Inc.
Softbank Group Corporation
Robert Bosch GmBH (Bosch)
Mazda Motor Corporation
Volvo Car Corporation
Personal Genome Diagnostics (PGDx)
La Jolla Institute for Immunology
New York Stem Cell Foundation
Sanford Burnham Prebys Medical Discovery Institute
- Represented several automakers, namely Hyundai Motor Corporation, Mazda Motor Corporation, Subaru Corporation, Volvo Car Corporation, Robert Bosch GmbH, and Robert Bosch LLC, in the favorable settlement and licensing of technologies associated with third-party audio integration.
- Representing Trend Micro in connection with various licensing transactions pursuant to its investments.
- Assisted with the patent licensing and collaboration between client AgeX Therapeutics and Sernova for the treatment of Type I diabetes and haemophilia A.
At Fenwick & West LLP, the team around lead trio Jennifer Stanley, Jonathan Millard, both in San Francisco, and Michael Farn in Mountain View, focuses on technology licensing agreements as befits the technology powerhouse's wider positioning. The group's outstanding track record attracts large international corporations and start-ups and emerging companies alike, but also appeals to prestigious research institutes and universities, for example, for agreements involving technology transfer offices. The practice is particularly visible in large-cap transactions, but is also extremely active in the venture and growth capital space, not the least because of its wide-ranging technical expertise, including specialist knowledge of cryptocurrency, blockchain, augmented and virtual reality, and autonomous vehicles. The firm grew its privacy and cybersecurity practice to offer a comprehensive legal, business and technical advice package, leading to a number of new clients joining the client roster, including several hi-tech unicorns. San Francisco-based duo David Hayes and Jake Handy enjoy an excellent reputation.
Jennifer Stanley; Jonathan Millard; Mike Farn
Other key lawyers:
Jake Handy; David Hayes; Stefano Quintini; Ralph Pais; Stephen Gillespie
Amunix Pharmaceuticals, Inc.
Audentes Therapeutics, Inc.
BioAge Labs, Inc.
Santen Pharmaceutical Co., Ltd
NortonLifeLock Inc. (fka Symantec)
Silver Peak Systems, Inc.
- Represented Amunix Pharmaceuticals in negotiations concerning an agreement to license its XTEN unstructured polypeptide technology platform to F. Hoffmann-La Roche Ltd and Hoffmann-La Roche Inc., a deal worth up to $1.5bn.
- Represented Second Genome in a strategic collaboration with Gilead Sciences, with a deal value of approximately $1.5 bn.
- Represented Audentes Therapeutics in its $3bn acquisition by Astellas Pharma Inc.
Goodwin's bi-coastal presence indicates the group's strong commitment to the technology and life sciences sectors. The already deep bench gained even more heft with the arrival of life sciences experts Sabrina Poulos, formerly at Wilson Sonsini Goodrich & Rosati, in San Francisco in July 2020; and Kristina Bieker in the Boston office, who joined from McDermott Will & Emery LLP in December 2019. The practice assists clients with all life stages of their patent portfolios, with a particularly busy caseload for start-ups and growth companies on the development of licensing programmes, for example; it also advises academic institutions who rely on the team for their spin-outs and other licensing agreement needs. Strategic alliances, joint ventures, commercialization and collaboration agreements, both domestic and multi-jurisdictional, are included in the practice's track record. Settlement agreements in the context of patent disputes are another area of strength. Additionally, clients can draw on the firm's complementary teams for regulatory and compliance advice, tax matters, or litigation, making the firm a popular choice for high-stakes matters. The firm's group of financial professionals contribute their expertise transaction modeling and analysis expertise for M&A transactions, venture-backed financings and financial planning as part of the firm's client partnership model that combines legal advice with business advice. Karen Spindler joined Gibson, Dunn & Crutcher LLP in March 2020.
James Riley; Catherine McCarty
Other key lawyers:
Kingsley Taft; James Riley; Noelle Dubiansky; Christopher Denn; Bethany Withers; Sarah Solomon; Kevin Lam; Stephen Charkoudian
Before Brands, Inc.
New Balance Athletics, Inc.
- Advising longstanding client 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 (MHLW) and Takeda Pharmaceutical to purchase and distribute 50m doses of Moderna’s vaccine candidate against Covid-19 (mRNA-1273).
- Represented Lyft in its strategic partnership with Gett Taxi, through which Gett’s corporate customers would be able to use their Gett apps to order Lyft cars.
- Represented Clypd, a Boston-based developer of a leading audience-based sales platform for television advertising, in its sale to AT&T, providing significant IP counseling on the handling of Clypd’s intellectual property assets.
Jones Day impresses with its powerful licensing transactional practice. Driven by the firm's busy M&A and private equity caseload, the licensing and technology transactions practice of Joseph Melnik (Silicon Valley) and his team is among the most renowned practices in the market, especially in transactions from the hi-tech, biotechnology, and pharmaceutical sectors. The group is also exceedingly well versed in advising on the negotiation and drafting of strategic stand-alone license agreements, such as joint development agreements, strategic alliances and cooperations to further the development and commercialization of new technologies. The team includes several members with a STEM degree and frequently draws on its international office network for multi-jurisdictional matters. Anthony Insogna in San Diego is the firm's global IP chair. Associate Robert Latta specialises in technology transactions.
Joseph Melnik; Anthony Insogna
Other key lawyers:
Warren Nachlis; Ka-on Li; An Doan; Thomas Briggs; Robert Latta
Astellas Pharma Inc.
City of Hope
Seminole Hard Rock Entertainment, Inc.
Shanghai Junshi Biosciences Co., Ltd.
Smith & Nephew plc
Sumitomo Dainippon Pharma Co., Ltd.
The Procter & Gamble Company
- Provided counseling to Ansys, Inc. on the $700m acquisition of Analytical Graphics, Inc., a provider of mission-driven simulation, modeling, testing and analysis software for aerospace, defense and intelligence applications.
- Represented Shanghai Junshi Biosciences Co., Ltd. in its strategic collaboration and license agreement with Eli Lilly and Company for the development, manufacturing, and commercialization of two antibodies for the prevention and treatment of the Covid-19 Sars-CoV-2 novel coronavirus.
- Advised City of Hope, a world-renowned independent research and treatment center for cancer, diabetes and other life-threatening diseases, on an exclusive worldwide license with Australian biotechnology company, Chimeric Therapeutics Ltd.
Morrison & Foerster LLP excels in high-stakes technology licensing matters, both in a transactional and commercialization context and in development projects, often in the shape of joint development agreements or of strategic alliances. San Francisco-based practice head Aaron Rubin and his team make a point of specializing in disruptive technologies as they emerge and have built an impressive track record of matters involving artificial intelligence, distributed ledger technology, fintech, and virtual and augmented reality, among others. The life sciences sector is the group's second mainstay, but the practice is also particularly active in acting for consumer product and semiconductor clients. The practice's many international clients also benefit from the firm's wide geographical presence. Key licensing contacts include Matthew Karlyn in Boston; San Francisco-based trio Rufus Pichler, Tessa Schwartz and William Schwartz; Stephanie Sharron in Palo Alto; and New Yorkers Vivian Hanson and Anthony Ramirez, an of counsel.
Other key lawyers:
Matthew Karlyn; Rufus Pichler; Tessa Schwartz; Stephanie Sharron; Vivian Hanson; Anthony Ramirez
Johnson & Johnson
Silicon Valley Bank
Orrick, Herrington & Sutcliffe LLP underwent a number of recent changes with the arrival of Sarah Schaedler from Kirkland & Ellis LLP in October 2020 in the San Francisco office; this followed the arrivals of patent, IT and data expert Colleen McDuffie from Arnold & Porter in Washington DC, and that of life sciences and biotechnology specialist Shana Solomon, formerly in-house at Velocity Sciences, in Boston, both in September 2020. Following the departure of former co-head of the global technology transactions practice Glynna Christian to Holland & Knight LLP in January 2021, the Menlo Park-based Daniel Yost now co-heads the practice with new arrival Schaedler. With its combination of strength in market-leading technology transactions, often acting for technology giants, in licensing-related patent disputes, and its outstanding track record in the venture and growth capital space, the firm remains among the finest licensing addresses in the market.
Other key lawyers:
Sarah Schaedler; Clement Roberts; Steven Routh; Sten Jensen; Jennifer Morrill
‘The team has deep knowledge of issues related to specific technology agreements and is able to drive results even with difficult counterparties.’
‘William Wilson has deep knowledge of the issues, both legal and technical and is able to clearly advise and support both the legal and business teams. He has a relaxed and collaborative negotiation style that promotes resolution of issues, which is a very helpful skill when dealing with a difficult counterparty.’
‘If you want to work with experts in the tech world, you want to work with Orrick. They have actually done the deals that other firms read about. They not only anticipate problems, but help solve them. They deliver.’
‘Aravind Swaminathan offers solid judgement and unique insights. Tireless worker.’
- Represented OpenTV in patent licensing agreement litigation against BBiTV.
The team at Weil, Gotshal & Manges LLP shoulders a substantial transactional caseload in addition to a busy stand-alone licensing practice. The group frequently joins forces with its corporate colleagues in M&A, private equity, finance, and restructuring to guide clients through strategic and often large-cap transactions, both in the US and abroad. The stand-alone practice includes portfolio acquisitions and divestitures, strategic alliances, research and developments agreements, as well as e-commerce and other commercial contracts. New York-based practice head Michael Epstein and his team are particularly active in the healthcare and life sciences sectors, including for e-health clients, with the consumer product and technology sectors as other especially prominent sectors. Charan Sandhu and Jeffrey Osterman complete the New York partner trio while Karen Ballack is the key contact in the Silicon Valley office.
Other key lawyers:
Charan Sandhu; Karen Ballack; Jeffrey Osterman
‘Weil’s team is a valued partner. They have a deep understanding of technology and vast legal experience. Their drafting and negotiation skills are first-rate, and importantly, the kind of people who you want to have on your side – ethical and professional.’
‘Karen Ballack is outstanding in legal knowledge and experience; one of the best drafters in the business.’
‘Charan Sandhu is a great strategist and has a deep understanding of her client’s business needs.’
‘Anne Capella has a deep understanding of patent issues; applies litigation experience to practical solutions.’
‘Marisa Geiger is super responsive; a great drafter and negotiator.’
‘Excellent IP transactions team. Deep knowledge of IP and licensing for a variety of transaction types.’
‘Sound judgement and negotiation skills, organization, clear thinking, and leadership.’
‘The level of expertise and attention to detail is extraordinary. I have worked with many firms and this is by far the most thorough group in which I have the utmost confidence.’
‘Karen Ballack and her team Alexa Clinton and Marisa Geiger are a force to be reckoned with! They are extremely knowledgeable and attentive to the needs of their clients.’
Benefytt Technologies, Inc.
The Blackstone Group
Campbell’s Soup Company
Churchill Capital Corp III
Eli Lilly and Company
Froneri International Limited
Healthcare Merger Corp.
Legg Mason, Inc.
L’Oreal USA, Inc.
MGM Resorts International
Montagu Private Equity
Wyndham Destinations, Inc.
- Acted as Eli Lilly’s primary outside transactional counsel for matters relating to their Covid-19 antibody therapies, including their agreements relating to product supply.
- Advised ChargePoint, Inc., the operator of, at the time, the largest open electric vehicle (EV) charging network and a provider of an integrated portfolio of hardware, cloud services and support designed to charge any EV anywhere, on the technology and IP aspects of its combination with Switchback Energy Acquisition Corporation, a SPAC sponsored by NGP Switchback, LLC, in a transaction that implies a ChargePoint enterprise value of $2.4bn.
- Advised SiriusXM on the technology and IP aspects of its acquisition of Simplecast and Stitcher and its minority investment in SoundCloud.
Baker Botts L.L.P.'s licensing practice is closely connected to the firm's patent portfolio development and management practice and offers extensive experience in a wide range of licensing agreements, including complex cross-border contracts for the acquisition or disposal of portfolios, the research and development of new technologies, and outsourcing agreements. Additionally, the group demonstrates strength in transactions, acting for targets or the acquirer. The practice covers a broad range of sectors, with a particular focus on the technology, electronics, life sciences, and education sectors. Robert Scheinfeld in New York chairs the practice, with Christa Brown-Sanford in Dallas acting as deputy chair. Washington DC's Luke Pedersen and Austin's Margaret Sampson complete the licensing practice's lead quartet. The very experienced Christopher Palermo joined the Palo Alto office in August 2020 from Hickman Palermo Becker Bingham LLP, now Hickman Becker Bingham Ledesma LLP. In September 2020, litigator and portfolio evaluation and development specialist Peter Kang arrived from Sidley Austin LLP, and now splits his time between the San Francisco and Palo Alto offices.
Robert Scheinfeld; Christa Brown-Sanford; Luke Pedersen; Margaret Sampson
Other key lawyers:
Paul Ragusa; Samir Bhavsar
‘Extensive experience over nearly 20 years in the specific domain of video codec patent licensing.’
‘Paul Ragusa is a stellar adviser.’
‘Patent expertise with a deep bench of diverse attorneys.’
‘Christa Brown is great at listening and understanding client needs and at using that input to assemble great teams to resolve issues. A strong current and future leader for the firm.’
‘All Baker Botts employees always listen to any concern and bring answers to any subject.’
Cisco Systems Inc.
University of Pennsylvania
Brother Industries Ltd.
Broadcom (CA Technologies)
MasterCard International Incorporated
- Acted as Cisco’s primary outside counsel for patent licensing, strategic portfolio development, defensive patent analysis, and overall counseling and patent strategy.
- Advised Dell Technologies on a wide range of patent matters.
- Assisted Columbia University with the development and management of its worldwide patent portfolio covering a wide range of physical and life sciences technologies.
Finnegan, Henderson, Farabow, Garrett & Dunner LLP covers stand-alone licensing and collaboration agreements, the licensing aspects of significant transactions, including the necessary due diligence, and settlement agreements in patent litigation conducted by the firm's litigators. With its strength in patent litigation and prosecution, the firm is a very good choice for clients seeking seamless advice on the entirety of their patent portfolios. The IP boutique has offices in the US (Washington DC, Reston, Palo Alto, Boston, Atlanta), a London office, and four Asian offices in Seoul, Shanghai, Taipei and Tokyo; as a result, it is adept at handling domestic and cross-border matters and covers a broad sector range thanks to its substantial size. Strategic licensing agreements and transactions are areas of particular strength. Managing partner Anand Sharma and chair Mark Sweet, both based in the Washington DC office, are in charge of the firm. Fellow Washington DC-based Brian Kacedon is the key licensing contact.
Anand Sharma; Mark Sweet
Other key lawyers:
‘The best thing is having a partner in Asia who knows our business and culture well and helps align all our IP matters professionally.’
Foley & Lardner LLP
Foley & Lardner LLP combines a strong transactional practice with a busy stand-alone caseload. The group stands out through its track record of advising on large-cap transactions, including joint ventures, with its role as advisor to Sumitomo Dainippon Pharma on its $3bn strategic alliance with Roivant Sciences as one recent example. With proven expertise in complex licensing agreements, such as multi-jurisdictional manufacturing agreements, and development and commercialization agreements, the group is a popular choice for domestic and international clients, including universities and research institutions. Washington DC-based duo Michele Simkin and Andrew Rawlins lead the team. With the arrivals of Eric Sophir in Washington DC and of Gary Solomon in Dallas, both formerly at Dentons, the group's electronics bench was noticeably strengthened.
Michele Simkin; Andrew Rawlins
Other key lawyers:
Adelson Medical Research Foundation
Calsonic Kansei Corporation
Checkpoint Therapeutics, Inc.
Cyprium Therapeutics, Inc.
Daiichi Sankyo Co., Ltd.
Fortress Biotech, Inc.
Harley-Davidson Motor Company
Johnson Controls, Inc.
J. Craig Venter Institute
Lupin North America
Menarini Silicon Biosystems S.p.A.
Mustang Bio, Inc.
New York University
Nissan Motor Corporation
S.C. Johnson & Son, Inc.
Shine Medical Technologies
Sumitomo Dainippon Pharmaceutical
Takeda Pharmaceutical Company
- Advised Daiichi Sankyo on establishing a strategic partnership with Ultragenyx Pharmaceutical, related to Adeno-Associated Virus (AAV)-based gene therapy manufacturing technology.
- Assisted Rockwell Automation with the creation of Sensia – the oil and gas industry’s first fully integrated automation solutions provider.
- Assisted Sumitomo Dainippon Pharma with the IP due diligence for a multi-billion US dollar strategic alliance with Roivant Sciences.
Kirkland & Ellis LLP offers longstanding experience in advising licensors and licensees on high-stakes licensing agreements. Often involved in patent matters that form a part of wider contracts, such as joint development agreements, supply agreements, or service and technical assistance agreements, the group brings a business-focused approach to its licensing practice. Its additional expertise in patent portfolio management and monetization, for example through the set-up of licensing programmes, joint ventures, divestitures or buy-outs, is a further asset. The pharmaceutical, life sciences, technology and software sectors provide particularly busy streams of work. Key contacts include David MacDonald in New York and Chicago's Seth Traxler, Neil Hirshman, Russell Levine and Adam Petravicius, and John Lynn in San Francisco. Matthew Colman left for an in-house position at Syntellis in September 2020 while Sarah Schaedler joined Orrick, Herrington & Sutcliffe LLP in the same month. In April 2020, Kate Withers joined Latham & Watkins LLP, followed by Sam Hong's departure to Perkins Coie LLP in May 2020.
Other key lawyers:
David MacDonald; Seth Traxler; Neil Hirshman; Adam Petravicius; Russell Levine
Open Invention Network
- Represented Danaher in acquiring the Biopharma business of GE Life Sciences for a cash purchase price of approximately $21.4bn in a complicated carve-out transaction with thousands of patent assets transferred or subject to various cross-licenses between the GE entities and the Danaher entities.
Latham & Watkins LLP unites life sciences and technology expertise and a powerful transactional practice under one roof. Led by the Silicon Valley-based Judith Hasko, the team specializes in complex transactions and agreements. 2020 also showed a raft of cross-licensing and joint development agreements in addition to a number of high-profile M&A transactions and public offerings. Given the practice's wide-ranging life sciences expertise spanning pharmaceuticals, medical devices, biologics gene therapy, and agricultural and food products as key pillars, its popularity among well-known US and international sector giants comes as no surprise. The firm's global presence, including in other key life sciences and technology markets, such as China and Europe, is another asset. The firm's other US licensing hubs are the New York and San Diego office. In April 2020, technology-focused transactions specialist Kate Withers joined the New York office from Kirkland & Ellis LLP.
Other key lawyers:
Alan Tamarelli; Steve Chinowsky; Christopher Hazuka
‘Good business acumen and willing to find pragmatic solutions in the interest of the client.’
‘Very responsive and very quick turn-around.’
Swedish Orphan Biovitrum
PHC Holdings Corporation and Ascensia Diabetes Care
- Represented Tokyo-based Astellas Pharma in its co-development and co-commercialization agreement with Adaptimmune, a biopharmaceutical company headquartered in the US and UK, to bring new stem-cell derived allogeneic T-cell therapies to people with cancer.
- Advised US-headquartered Ridgeback Biotherapeutics on a collaboration with Merck to develop EIDD-2801, an orally available antiviral candidate currently in early clinical development for the treatment of patients with Covid-19.
- Represented the Swedish-based Oasmia Pharmaceuticals in its global strategic partnership with Elevar Therapeutics for the development and commercialization of Oasmia’s proprietary anticancer product.
Morgan, Lewis & Bockius LLP demonstrates a particular strength in advising on the licensing aspects of high-value technology transactions, particularly in outsourcings, but also offers a substantial bench of practitioners specializing in life sciences, software, mechanical, electrical, and e-commerce and business method patents. The international giant is the advisor of choice for a number of prestigious pharmaceutical and technology companies that entrust the negotiation and drafting of research, development and commercialization agreements, their collaboration agreements, and corporate transactions, including joint ventures, to the team of practice head Louis Beardell in Philadelphia. Many of the group's matters exclusively involve the US, but the team has the expertise of its international colleagues at its fingertips for its numerous cross-border licensing mandates. The Silicon Valley-based Dion Bregman is the deputy head of the group, while Princeton's Alan Leeds heads the life sciences transactions practice, with San Francisco's Benjamin Pensak acting as his deputy. Rahul Kapoor, also in Silicon Valley, is well known for his strong licensing expertise. Pittsburgh's Peter Watt-Morse is also recommended.
Louis Beardell; Dion Bregman; Alan Leeds; Benjamin Pensak
Other key lawyers:
Rahul Kapoor; Peter Watt-Morse
‘Morgan Lewis’ team is responsive, strategic, and practical.’
‘We found industry knowledge stronger than in comparable firms.’
Eli Lilly & Co.
Evolve by Nature
National Comprehensive Cancer Network (NCCN)
NBE Therapeutics Ltd.
- Represented Celgene Corporation in its amended collaboration agreement with Editas Medicine Inc., which allows the parties to research, develop, and commercialize autologous and allogeneic alpha-beta T-cell medicines for the treatment of cancer and autoimmune diseases.
- Represented Eli Lilly and Co. in its collaboration and license agreement with England–based Evox Therapeutics to leverage Evox’s proprietary DeliverEX platform to develop and deliver RNA interference and antisense oligonucleotide drug payloads for the potential treatment of neurological disorders.
Ropes & Gray LLP primarily acts for life sciences and technology clients. The team of Boston-based practice head David McIntosh is a popular choice for US and international clients due to its strong track record of advising market-leading pharmaceutical and life sciences companies on high-stakes strategic transactions, as well as its extensive experience of assisting start-ups and growth companies with developing and commercializing their patent portfolios. Complex collaboration agreements, including large-cap ones, and major commercialization agreements are areas of particular strength. The firm's in-house technical advisor programme provides clients with a roster of experienced scientists and engineers. Life sciences specialists Hannah Freeman and Abigail Gregor, both in Boston, made partner in November 2020. Megan Baca in Silicon Valley is another key contact.
Other key lawyers:
Megan Baca; Melissa Rhones; Violetta Kokolus; Ed Black; Hannah Freeman
‘Adept at providing counsel on global IP issues and strategy for managing an evolving portfolio.’
‘Emilia Cannella provides both practical and strategic advice. She excels as a lawyer’s-lawyer, providing counsel on deeply technical issues. Even more, she provides accessible strategic advice to the the IP-lay person navigating global IP issues.’
Takeda Pharmaceutical Company Limited
Sarepta Therapeutics, Inc.
Waters Technologies Corporation
Sana Biotechnology, Inc.
Coherus Biosciences, Inc.
CStone Pharmaceuticals Co., Ltd.
M/A-COM Technology Solutions Holdings Inc.
Juno Therapeutics, Inc.
Pacific Investment Management Company LLC
Los Angeles Biomedical Research Institute (LA BioMed)
uniQure Biopharma B.V.
Blackstone Life Sciences
- Represented Sarepta Therapeutics in a high-value IP-intensive collaboration and licensing agreement with Roche.
- Advised Blackstone Life Sciences on its $2bn IP-intensive and strategic collaboration to support Alnylam’s advancement of innovative RNA interference (RNAi) medicines.
- Represented uniQure N.V. in an IP licensing and commercialization agreement to provide biopharmaceutical company CSL Behring with exclusive global rights to uniQure’s investigational gene therapy for patients with hemophilia B, including a $450m upfront cash payment and eligibility to receive up to $1.6bn in milestone payments.
Cleary Gottlieb Steen & Hamilton
Cleary Gottlieb Steen & Hamilton enjoys an excellent reputation for its patent licensing work in the context of high-value corporate transactions. New York-based practice heads Daniel Ilan and David Herrington and their team shoulder a substantial number of large-cap licensing transactions for market giants, recently especially in the technology, private equity, and healthcare sectors. Cybersecurity-related mandates are in safe hands with the team, given Ilan's expertise in the field and his role as member of the Cyber Law Program in the International Cyber Security Research Center at The Hebrew University of Jerusalem. The practice frequently acts in cross-border matters involving Japan and different European jurisdictions, leveraging its international teams for seamless guidance.
Daniel Ilan; David Herrington
Alphabet / Google
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 on the IP aspects of a number of transactions where analysis of patent license issues was a key element of the transaction, including its acquisitions of Fitbit, Looker and Fossil’s smartwatch technology assets.
The team at Hunton Andrews Kurth LLP is well versed in assisting with the patent licensing aspects of corporate transactions and in advising on development and commercialization agreements. The group's most prominent matters originate in the manufacturing, life sciences and pharmaceutical, and education sectors, but the practice is also active in a number of other sectors, including the energy and automotive industries. The lead trio consists of John Gary Maynard, Tyler Maddry and Michael Oakes, all based in the Washington DC office. Michael Lennon joined Potomac Law Group in April 2020; Michael Turner joined Yokogawa as director of IP strategy in the same month; Laurence Posorske moved to a counsel position at Arent Fox LLP in February 2020; and Clifford Ulrich joined Carter, DeLuca & Farrell LLP in August 2020.
John Gary Maynard; Tyler Maddry; Michael Oakes
Other key lawyers:
Gary Abelev; Gregory Porter
Knobbe Martens Olson & Bear LLP stands out through its deep bench that includes a high number of patent attorneys alongside its large roster of lawyers. It has an excellent reputation for the development and commercialization of patent portfolios for life sciences companies, especially biotech and medtech players - the home turf of the renowned Salima Merani in the Orange County office. The practice's range of experience includes due diligence assignments, assistance with the IP aspects of financing rounds and with market offerings. The frequently headline-grabbing matters indicate the group's very good standing among clients. Steven Nataupsky, also based in Orange County, directs the practice.
Other key lawyers:
Salima Merani; Rose Thiessen; Kimberly Miller
‘Close client-focused working makes this team stand out from the crowd. The attorneys really understand their clients’ needs and put them at the forefront of their IP strategy advice. They have a sophisticated knowledge of the market and use that to great aplomb in choosing a successful path through a highly complex technological landscape.’
‘Salima Merani is a legend in the med tech space. She is the go-to partner for device companies looking to grow fast and strong. She is a force multiplier when it comes to IP valuations.’
‘Adam Gilbert’s grasp of the subtle complexity of technology is impressive, especially when it is applied to market leading innovations.’
‘Michael Christiansen has a superb understanding of global aspects of patent law. His mastery of international patent prosecution strategies adds value in itself.’
‘Albert Sueiras is a rising star who uses innovative approaches to secure winning IP positions for his clients.’
‘Amazing depth of knowledge on all things IP law, a great place to handle your IP needs. All the partners I worked with were some of the best. I felt like I had the A-Team all the time.’
‘Salima Merani is hands-down simply one of the best counsel I’ve ever worked with. Her client management skills are top-notch. She not only has a command of patent law, but also of transactions/negotiations, and the business knowledge and acumen to go along. She has excellent business and commercial sense. She not only provides fantastic service, she is a great teacher and mentor as well.’
Tyra Biosciences, Inc.
Vensana Capital, LLC
Personal Genome Diagnostics Inc.
ICU Medical, Inc.
Agilent Technologies, Inc
United States Postal Service
Fisher & Paykel Healthcare Ltd.