Patents: licensing in United States
DLA Piper LLP (US) delivers 'first class service' and offers 'a one-stop shop for all legal needs', thanks to the 'impressive scope of its US and international practice'. The group fields a strong transactional practice, but also excels in commercial licencing agreements and litigation settlements. Technology-related mandates account for the majority of recent highlight matters, but the group was also active for life sciences, automotive, retail and energy clients. Clients include Qualcomm, the University of Texas at Austin and Revolution Contraceptive. Practice head Mark Lehberg in San Diego, 'exceptional IP attorney' Jeffrey Aronson and Victoria Lee in Silicon Valley, and Philadelphia's Darius Gambino form the heart of the practice. Silicon Valley's Tzung-Bor Wei made partner. Michael McGurk left to found McGurk Group LLC. John Garvey joined Noria Therapeutics and Shane Albright joined Goodwin.
Fenwick & West LLP specializes in due diligence for technology-related transactions, but also excels in licensing work for universities and other research bodies. In a recent technology highlight, Stephen Gillespie advised Github on its $7.5bn acquisition by Microsoft. In the healthcare and life sciences space, Mountain View's Stefano Quintini, alongside Effie Toshav, assisted biopharmaceutical player Loxo Oncology with its collaboration agreement with Bayer regarding a cancer treatment, involving a $400m upfront payment with eligibility for two further potential milestone payments totaling $650m. Also of note, David Hayes in San Francisco advised Landing.ai on its master service agreement with Foxconn Interconnect Technology aimed at applying the client's artificial intelligence expertise to manufacturing processes. Other work came from Invenra, Denali Therapeutics and LG Display. Jake Handy chairs the technology transactions practice group in San Francisco and Vejay Lalla recently joined the New York office from Davis & Gilbert LLP. Kate Withers joined Kirkland & Ellis LLP.
Finnegan, Henderson, Farabow, Garrett & Dunner LLP boasts 'a very strong team', consisting of 'a large number of excellent attorneys' who 'work as a team to get complex matters handled effectively and efficiently'. The IP giant was especially active in pharmaceutical matters, which included the representation of Roivant Sciences in the negotiation and drafting of several worldwide licensing and collaboration agreements, including an agreement with Poxel relating to an oral therapy for type-2 diabetes and extensive due diligence work. A recent electronics highlight was Doris Johnson Hines' representation of defendant Toshiba America Information Systems in breach of contract litigation against MPEG LA. Other instructions came from a semiconductor manufacturer and a renewable energy player. Clients also include AbbVie, Fujifilm and United Technologies. Other key practitioners include practice head John Paul, Brian Kacedon and Jill MacAlpine, all based in Washington DC.
Foley & Lardner LLP
Foley & Lardner LLP confirmed its prowess in the pharmaceutical and life sciences sectors by adding multiple highlight matters from these sectors to its already strong track record of work. The group assists with development and commercialization agreements, such as the one concluded between client Lacerta Therapeutics and Sarepta Technologies for the treatment for Pompe disease. Additionally, the team advises on drug evaluations, which recently included assisting Innovent Biologics with its global collaboration agreement with Hutchison MediPharma aimed at evaluating the combination of two of the parties' drugs. The electronics and technology sectors are other key sectors. Acasti Pharma, eMargin and Hitachi also feature on the client roster. Key figures include practice head Michele Simkin and her deputy Andrew Rawlins in Washington DC, and San Diego's Beni Surpin. Chicago's Aaron Tantleff is also noted. The merger with Gardere Wynne Sewell LLP brought Michael Dubner, Paul Vickers Storm, Terrell Richard and Guy Birkenmeier to the team in Dallas.
Morrison & Foerster LLP's strong suit is transactions in the technology sector. The group combines a global footprint with in-depth knowledge of the technology sector, enabling it to assist with a broad range of instructions, including joint ventures, joint development agreements, distribution and supply agreements and outsourcing mandates. Via Licensing instructed the team to advise on a new patent tool for autonomous motor vehicles and several licensing agreements concerning existing or newly created patent pools. In a recent transactional highlight, the team advised SoundCloud on its partnership agreement with Pandora, allowing users to purchase SoundCloud's ad inventory through Pandora. Other clients include Shanghai Henlius Biotech, Wal-Mart and WM Partners. Aaron Rubin in San Francisco and Alistair Maughan in London direct the technology transactions group. Other key US practitioners include Rufus Pichler, Tessa Schwartz, Northern Virginia's Thomas Knox and Vivian Hanson in New York. John Delaney joined Perkins Coie LLP.
Baker Botts L.L.P. impresses with its 'great licensing acumen, negotiation skills and stamina'. Technology and life sciences-related licensing work accounts for the bulk of the recent highlights, but the group also fields a strong practice for universities. Recent standout instructions include assisting Telesat with joint development, licensing and manufacturing agreements for a low-earth orbit satellite constellation, which included a collaboration agreement between Telesat and Airbus and a development agreement between Telesat, Thales Alenia Space and Maxar. Additionally, the team advised Columbia University on the development and management of its worldwide patent portfolio covering physical and life sciences technologies, including counselling regarding standard-essential patents and related group licensing of patents. Practice head Barton Showalter, deputy practice head Christa Brown-Sanford, both in Dallas, and New York's Paul Ragusa are names to note.
Jones Day's practice consists of four areas: strategic alliances, IP-driven private equity and venture capital transactions, IP-driven M&A and licensing in the context of litigation settlements or commercial strategy. Life sciences-related mandates account for the majority of recent highlights, with the group's work on Sanofi's long-term collaboration and license agreement with Denali Therapeutics to find treatments for neurological and systemic inflammatory diseases as a major standout matter. In a recent transactional highlight the group advised Procter & Gamble on its $3.4bn acquisition of Merck's consumer health business. Further, Confluence Technologies instructed the team to advise on the IP aspects of its acquisition by private equity firm TA Associates, which involved agreements regarding Confluence's data-driven financial services platform. Other key clients include Educational Testing Service, Chevron and Astellas Pharma. Silicon Valley's Joseph Melnik directs the US practice group, and Ka-on Li recently made partner.
At Kirkland & Ellis LLP, the arrival of Adam Petravicius from Jenner & Block LLP and of Kate Withers from Fenwick & West LLP bolstered the group's already strong technology transactions practice. The team stands out for its broad sector spread, with recent instructions ranging from the pharmaceutical and technology sectors to the electronics and insurance sectors. In addition to advising Abbott Laboratories on the licensing terms for the settlement of a patent dispute, the practice also assisted BioIVT with the licensing agreements for its acquisition of Ascendance. In addition, Boeing relied on the group for the patent license agreements necessary for its joint venture with Safran aimed at jointly designing and building auxiliary powers units. Other clients include EUSA Pharma, Open Invention Network and Tigen Pharma. Chicago trio Neil Hirshman, Seth Traxler and Russell Levine direct the practice group.
Ropes & Gray LLP was especially active in healthcare- and pharmaceutical-related instructions, though the group's recent highlights also include semiconductor and biotechnology mandates. Practice head David McIntosh advised Sarepta Therapeutics on multiple transactions, ranging from the negotiation of a license and option agreement with Lacerta Therapeutics to the negotiation of an exclusive license agreement with Lysogene to develop a gene therapy aimed at treating a neurodegenerative disorder. Bain Capital, BioTelemetry and Shire are other key clients. Silicon Valley's Megan Baca, Edward Black and Mark Bellomy are also noted, as is Regina Sam Penti, who recently made partner. Harry Rubin joined Kramer Levin Naftalis & Frankel LLP.
Weil, Gotshal & Manges LLP provides comprehensive service on licensing matter, including due diligence in relation to M&A and joint ventures, research and development agreements and outsourcing agreements. On the life sciences side, the group recently advised Eli Lilly on the licensing aspects of its collaboration with Dicerna Pharmaceuticals, which aimed at using the latter's technology platform to discover and commercialize new medicines for cardio-metabolic disease, neurodegeneration and pain. A recent technology highlight was advising Facebook subsidiary Oculus on several strategic commercial agreements regarding Oculus' virtual reality products. Atos, The Campbell Soup Company and Sanofi are also clients. Practice head Michael Epstein, Jeffrey Osterman and Charan Sandhu in New York, and Silicon Valley's Karen Ballack form the heart of the practice.
Cleary Gottlieb Steen & Hamilton shoulders an impressive corporate licensing caseload, often acting for high-profile clients in strategic transactions. Recent examples include advising Google on the patent licensing aspects of its $1.1bn cooperation agreement with HTC and assisting Honeywell on the licensing components of its homes and ADI Global Distribution spin-off, which involved a complex patent cross-licensing agreement. A consumer product sector highlight was the representation of 3M on the licenses affecting its $2bn acquisition of Scott Safety from Johnson Control. Practice heads Daniel Ilan, Leonard Jacoby and David Herrington are based in New York. Other clients include American Express, Lavazza and Henkel.
Goodwin primarily acts for technology and life sciences clients, both domestic and international. Due diligence in the context of mergers and acquisitions, financings and public offerings are as much part of the team's experience as stand-alone technology transactions, including strategic alliances and collaboration agreements. A recent standout instruction saw Stephen Charkoudian, who jointly heads the practice in Boston with Kingsley Taft, advise Kind on its strategic partnership with Mars. Former DLA Piper LLP (US) practitioner Shane Albright joined in Silicon Valley, while Jonathan Schur joined the New York team from Dechert LLP. Noelle Dubiansky in Washington DC and Bethany Withers in Boston made partner. Other clients include Aerpio Pharmaceuticals, Crispr Therapeutics and WiTricity.
IP boutique Knobbe Martens Olson & Bear LLP specializes in patent licenses and assignments as well as due diligence. The biotechnology, software and electronics sectors are key instruction generators, with many recent highlights coming from medical device manufacturers. In one standout mandate, Entellus Medical entrusted its patent strategy to Joseph Cianfrani, San Diego's Gerard von Hoffmann and Terry Tullis prior to its $662m acquisition by Stryker. For Millipede, von Hoffmann and Rabi Narula conducted the due diligence for multiple financing transactions, and also assisted Millipede with the IP aspects of its acquisition option agreement with Boston Scientific, potentially valued at $450m. Further, Epigen Biosciences sought advice from the group regarding its collaboration and license agreement with Novo Nordisk. Other clients include Spinal Kinetics, Ignyta and Apama Medical. Bryan Wahl, San Diego's Jason Jardine and Salima Merani are also noted. All lawyers are based in Irvine unless otherwise stated.
Morgan, Lewis & Bockius LLP fields a varied practice across the life sciences, pharmaceuticals and technology sectors. A recent healthcare highlight saw Pittsburgh's Peter Watt-Morse negotiate multiple license agreements for the embedding of proprietary content in healthcare technology products for the National Comprehensive Cancer Network. SanDisk instructed the team to advise on the drafting and negotiation of patent agreements regarding its SD flash memory card joint venture with Toshiba and Panasonic -- a cross-border mandate involving the US and Japanese jurisdictions. 'Extremely knowledgeable' key practitioner Rahul Kapoor in Silicon Valley, whose 'analysis of completely new issues and drafting skills are exceptional', is 'intelligent, creative and thinks outside of the box'. Philadelphia-based practice heads Louis Beardell and Eric Kraeutler, and San Francisco's Benjamin Pensak are also recommended. Christopher Bright, Kenneth Cheney, Michael Dreznes, Nathan Smith, Soyeon Pak Laub, and Todd Hales joined in Orange County, Brent Hawkins joined in San Francisco, Hosang Lee joined in Washington DC, and Chicago gained Hersh Mehta and Kevin Shortsle, all former McDermott Will & Emery LLP practitioners. Randall Sunberg left for Baker McKenzie LLP. Other clients include Alpha & Omega Semiconductor, Medisix Therapeutics and Yandex.
Orrick, Herrington & Sutcliffe LLP advises an impressive list of technology clients on a broad range of transactions with significant patent elements. The team's client list features several stellar technology players, including Pinterest, Microsoft, Instagram and Tesla in addition to a significant number of start-ups valued at $1bn and more. The transatlantic trio directing the practice consists of Glynna Christian in New York, Daniel Yost in Menlo Park and Kolvin Stone in London.
Cooley LLP has an especially strong track record of licensing work for clients in the life sciences sector, with due diligences as a core component of the caseload. The main practitioners are Scott Talbot in Reston, Nan Wu in San Francisco, Mika Reiner Mayer in Palo Alto and practice head Ivor Elrifi in New York.
Hunton Andrews Kurth LLP was active in a wide range of industry sectors, ranging from licensing work for Asator Global Technologies to assisting biopharmaceutical player Molecular Rebar Design and counseling Memorial Sloan Kettering Cancer Center on various licensing matters. Other instructions came from Dr. Jack Arbiser and his company Natuderm. Tyler Maddry in Washington DC directs the practice following the merger of Hunton & Williams and Andrews Kurth Kenyon in spring 2018. New York's Michael Lennon is also recommended.
Leveraging an expansive global footprint, Latham & Watkins LLP has in-depth expertise of the life sciences and technology sectors and more importantly has strong track record in a range of patent transactions. In a recent highlight, Silicon Valley-based practice head Judith Hasko advised biotechnology player Prothena on a global collaboration agreement with Celgene, aimed at developing new therapies for neurodegenerative diseases and involving the US and Irish jurisdictions. Additionally, Hasko assisted Revolution Medicines with its exclusive worldwide partnership with Sanofi to develop and commercialize new treatments for lung cancer and other types of cancer. Mapi Pharma, Codexis and Puma Biotechnology also feature on the client roster.