Firms To Watch: Patents: licensing

BakerHostetler‘s patent licensing department is particularly skilled at handling IP issues surrounding technology transactions and out-licensing technology deals for clients such as universities.
Brown Rudnick LLP‘s growing full-service intellectual property practice is recognized for its depth of experience in patent licensing deals, M&A transactions, and patent litigation. The department advises big companies, private equity funds, and hedge funds in the life sciences and tech sectors.

Patents: licensing in United States

DLA Piper LLP (US)

Known for handling complex patent licensing, acquisitions and sales, patent prosecution, patent due diligence and counseling as well as strategic patent asset management, DLA Piper LLP (US)‘s intellectual property and technology department advises clients across a diverse range of industries and technologies. Boston’s Larissa Bifano leads the team and advises on patents and licenses for AI-driven systems in addition to handling patent litigation. In San Diego, Lisa Haile focuses on patent protection and IP transactional matters. Raymond Miller in Philadelphia covers patent development and strategies with a life sciences focus, and Lauren Murdza is key name for technology transactions and general corporate matters, including licensing and development agreements. Based in Palo Alto, Victoria Lee is adept at handling a range of technology-related matters, including structuring, drafting, and negotiating complex commercial and intellectual property agreements, and Jeffrey Aronson also handles IP-related transactions in the TMT sector. Dallas-based Mark Lehberg extends the team’s expertise in technology licensing transactions. At the beginning of 2023, a large team of attorneys joined the team from Dentons, including San Francisco lawyers Peter YimRandy Omid  Parker Kuhl and Brian Ho as well as Seattle attorney Michael Swett and Palo Alto-based Christopher Eide.

Practice head(s):

Larissa Bifano


Other key lawyers:

Lisa Haile; Ray Miller; Victoria Lee; Jeffrey Aronson; Mark Lehberg; Lauren Murdza; Peter Yim; Michael Swett; Randy Omid; Parker Kuhl; Christopher Eide; Brian Ho


Testimonials

‘Trustworthy, knowledgeable, experienced team with breadth and depth of experience and good judgement.’

‘I have worked with more than a dozen senior intellectual property attorneys in the technology sector over two decades and Larissa Bifano is the best I have encountered. She is intelligent, effective, and trustworthy. She has sound judgement and she and her team work efficiently even around technologically sophisticated material.’

Key clients

Caelum Biosciences


CuraSen Therapeutics, Inc.


Codex


Liquidia Corporation


MicroSurgical Technology, Inc.


MVRx


Nanotronics Imaging


Personal Genome Diagnostics


Precision NeuroScience, LLC


Sanofi S.A.


Sanofi-Aventis US LLC


Sanofi-Aventis Recherche and Development


Synthetic Genomics, Inc.


Tesla, Inc.


Work highlights


  • Advised MicroSurgical Technology, Inc. on establishing, expanding, and managing its IP portfolio, including advice related to in-licensing technology from surgeons and universities and out-licensing technology to third parties.
  • Represented the University of Pennsylvania in the negotiation of a Research, Collaboration, & License Agreement with the Foundation for Angelman Syndrome Therapeutics to develop an investigational adeno-associated virus gene therapy for Angelman syndrome.
  • Represented Generian Pharmaceuticals in negotiating a collaboration and exclusive license agreement with Mitrobridge, Inc. (a wholly owned subsidiary of Astellas) to discover and develop novel small molecules for undruggable therapeutic targets by using a proprietary drug discovery platform for diseases that have limited treatment options.

Fenwick & West LLP

The technology transaction practice at Fenwick & West LLP represents leading technology and life science companies in IPOs, M&A transactions, litigation and prosecution, and licensing issues. The group is jointly led by Jonathan Millard in San Francisco, who focuses on M&A, licensing, and privacy matters, and Jennifer Stanley, who also chairs the firm’s copyright practice and is noted for her close relationships with clients in the media sector. Also based in San Francisco are Rufus Pichler, who regularly assists technology sector clients with transactions, in- and outbound licensing agreements, development and commercialization agreements, and Joseph Schenck, who is known for his ability to handle commercial transactions involving intellectual property, in particular in the interactive gaming industry. In Silicon Valley, David Hayes is a key contact for intellectual property matters, including litigation, licensing, distribution, and technology transfers. Michael Sussmann, who focuses on data privacy and cybersecurity, joined the group from Perkins Coie LLP in April 2023.

Practice head(s):

Jonathan Millard; Jennifer Stanley


Other key lawyers:

Rufus Pichler; David Hayes; Joseph Schenck; Michael Sussmann; Julia Arruda Rosenthal; Katherine Duncan; Mark Stevens


Testimonials

‘I highly recommend the Fenwick IP/licensing team, in particular Joseph Schenck, Julia Arruda Rosenthal and Jennifer Stanley, and I have been highly impressed. Clearly, they have invested in the video games industry. The team is very high class, extremely hard working and on top of that fun. Their advice really formed the basis of the deal, which was unique and innovative. We could not have structured it without them.’

‘Joseph Schenck is fantastic – can’t recommend him enough for licensing work and video games matters. Great lawyer, committed to his clients, hard-working and 100% available, and fun to work with. Joseph had excellent support from Julia Arruda Rosenthal, who is definitely the “next generation”.’

‘Fenwick’s industry expertise in my area (video games) is deep, decades-long, and broad, and has been demonstrated to me repeatedly over an extended period, including our work in 2023.’

Key clients

Cisco Systems, Inc.


Databricks


Figma Inc.


Integral Reality Labs


Lashify


Lessen


Netflix


Nikon Corporation


NS1


OpenAI


Paragraf


Reality Labs | Meta


Shockwave Medical, Inc.


Standard AI


The Arena Group


Twilio, Inc.


Work highlights


  • Represented Figma in its pending $20 billion acquisition by Adobe.
  • Advised Netflix’s Netflix Games division on all game- related matters, including intellectual property issues, game development, publishing and distribution deals and M&A strategy.
  • Represented Integral Reality Labs in its collaboration with Ubisoft for the creation of smart collectibles/NFTs.

Goodwin

Goodwin acts on behalf of clients in various industries, such as technology, life sciences, and financial services, in relation to developing and implementing patent procurement, management, and exploitation policies. In addition, the department also covers patent enforcement and IP litigation, and it is also active in advising on licensing and technology transactions. Catherine McCarty co-leads the team in Boston and specializes in matters concerning the pharma sector, while James Riley co-leads the department from the firm’s Silicon Valley office, representing emerging growth technology companies and venture capital firms. In Boston, Stephen Charkoudian covers technology, data and intellectual property transactions, Kingsley Taft is a key contact for clients in the biotechnology sector, and Bethany Withers chiefly advises tech companies on data, publicity rights, and intellectual property issues. Noelle Dubiansky in Washington DC frequently assists biotechnology, pharmaceutical, medical device, and various other life science enterprises with M&A transactions, strategic partnerships, and tech acquisitions.

Practice head(s):

Catherine McCarty; James Riley


Other key lawyers:

Stephen Charkoudian; Kingsley Taft; Noelle Dubiansky; Bethany Withers; Sarah Solomon


Key clients

Alert Innovation


OncoC4


WHP Global


Jnana Therapeutics


Adare Pharma Solutions


Kelun-Biotech


Wave Life Sciences


Entrada Therapeutics


Teva


Seagen


Orionis Biosciences


Nanobiotix


Bit.bio


Bev


Pioneering Medicines


Synaffix B.V.


Clockworks Analytics


Work highlights


  • Advised Alert Innovation on its $650m definitive agreement to be acquired by Walmart.
  • Advised OncoC4 in its agreement with BioNTech SE pursuant to which BioNTech receives an exclusive worldwide license to co-develop and commercialize OncoC4’s anti-CTLA-4 monoclonal antibody candidate.
  • Advised Sichuan Kelun-Biotech Biopharmaceutical in its exclusive license and collaboration agreement with Merck to develop seven investigational preclinical antibody-drug conjugates for the treatment of cancer.

Jones Day

With a focus on intellectual property transactions in the high-tech (including AI), fintech, biotech and pharmaceutical industries, Jones Day‘s IP transaction department covers the development, licensing, acquisition, and commercialization of key technology and intellectual property assets. The US group is led by Ka-On Li in Silicon Valley, who focuses on commercial and licensing transactions for clients active in industries such as technology, life sciences and financial services and advise son outsourcing, IP commercialization, as well as software- and cloud-related matters. In San Diego, Thomas Briggs has vast experience negotiating cross-border licensing arrangements, while Robert Latta focuses on IP matters relating to the life sciences and environmental sustainability spaces. In New York, Warren Nachlis' practice covers a range of IP-related matters and particularly centers on the pharmaceutical and biotechnology industries, and Scott Lyne focuses on corporate transactions, licensing, and counseling involving intellectual property and technology.

Practice head(s):

Ka-on Li


Other key lawyers:

Thomas Briggs; Warren Nachlis; Robert Latta; Scott Lyne


Key clients

ANSYS, Inc.


Asbury Automotive Group, Inc.


Astellas Pharma Inc.


Centre Lane Partners, LLC


Cibus Global, LLC


Incyte Corporation


J.F. Lehman


Labcorp


Meridian Bioscience, Inc.


Organon & Co.


restor3d, Inc.


Rich Data Corporation (Australia) Pty Ltd


Sanofi


Shanghai Junshi Biosciences Co., Ltd.


Sumitomo Pharma Co., Ltd.


VSE Corporation


Xyphos Biosciences, Inc.


Work highlights


  • Advised Xyphos Biosciences, Inc. in connection with a research collaboration and exclusive option license agreement with ImmunoPrecise Antibodies Ltd.
  • Advised Sanofi in connection with a Co-Development, Co-Commercialization & License Agreement with Johnson & Johnson’s Janssen Pharmaceuticals relating to the development and commercialization of vaccines for extra-intestinal pathogenic E.coli.
  • Advised Incyte Corporation on its collaboration and license agreement with CMS Aesthetics Limited for the development and commercialization of ruxolitinib cream.

Latham & Watkins LLP

Latham & Watkins LLP is well-known in the market for handling complex IP transactions, including cross-licensing, collaboration, and joint agreements, as well as due diligence relating to the licensing of IP. The team chiefly handles licenses relating to the life sciences and technology sectors, fielding dedicated teams maintaining close relationships with clients in these spaces. Key members of the team are Christopher Hazuka in San Diego, who advises life sciences companies on agreements and transactions, Aaron Gardner in New York, who focuses on the biotech and nutrition spaces, and Jengeun Jekkie Kim in the Bay Area, who handles licensing and commercial transactions in connection with digital health products and medical devices. Judith Hasko has left the firm.

Practice head(s):

Judith Hasko


Other key lawyers:

Christopher Hazuka; Aaron Gardner; Jungeun Jekkie Kim


Testimonials

‘I was really impressed with Aaron Gardner. Aaron has very comprehensive expertise in life sciences industry, so even though we worked on a licensing deal, his M&A experiences came in really handy on complex issues. He is a senior partner but can still draft on the fly (to the details of flawless section references and formatting) while negotiating and providing high-level strategic advice on the deal. Aaron is absolutely one of the top advisors.’

Key clients

Shape Therapeutics


Sonoma Biotherapeutics


Scleroderma Research Foundation


CytomX


4D Molecular Therapeutics (4DMT)


Endeavor BioMedicines


Sanofi


Erasca, Inc.


Nielsen BioSciences, Inc.


Zentalis Pharmaceuticals, Inc.


Ascendis Pharma A/S


Sirona


Praxis Precision Medicines, Inc.


Bluewhale Bio


Work highlights


Morrison Foerster

Noted for its capabilities in complex patent transactions, Morrison Foerster‘s intellectual property department’s expertise ranges from patent and technology licensing agreements, acquisitions, and joint ventures to strategic alliances, supply agreements, and global outsourcing matters. Michael Ward primarily handles patent strategy and protection matters in the life sciences and tech spaces and co-heads the practice with Aaron Rubin, who advises start-ups and established companies on technology transactions. Tessa Schwartz is routinely involved in technology commercialization matters, while William Schwartz regularly represents companies in corporate and tech transactions and Justin Haan advises on commercial and licencing agreements primarily in the TMT sector. Boston’s Matthew Karlyn is a key name for companies in the healthcare, pharmaceutical, medical device and technology industries. In January 2023 patent litigators Timothy Chen Saulsbury,  Eric Wiener, and Daralyn Durie joined the department from Durie Tangri LLP alongside Los Angeles-based partner Kira Davis. Unless otherwise mentioned, all named lawyers are based in San Francisco.


Practice head(s):

Michael Ward; Aaron Rubin


Other key lawyers:

Tessa Schwartz; William Schwartz; Matthew Karlyn; Justin Haan; Timothy Chen Saulsbury; Eugene Novikov; Eric Wiener, Kira Davis; Daralyn Durie; Ragesh Tangri; Adam Brausa; Aaron Fountain; Brian Nash; Matthew Ferry


Testimonials

‘The uniqueness in Morrison & Foerster LLP is their experience with technology licensing with a global perspective. Morrison & Foerster provides key geographical perspectives and ensures our Intellectual Property is protected.’

‘Matthew Ferry is an exceptional standout. His responsiveness, attention to detail, and positive demeanor are key qualities that we value. When collaborating with Matt, we know that going into any contract negotiations we will get the best outcome for our business.’

Key clients

OpenAI


Book.io


98point6


Dematic Corp.


Aegis Ventures LLC


EdiGene, Inc.


Foundation for Food & Agriculture Research


Enza Zaden


CSPC Megalith Biopharmaceutical Co., Ltd.


Work highlights


  • Advised OpenAI on structuring, drafting, and negotiating dozens of commercial partnerships.
  • Advised Book.io on its partnership with creators, publishers, and producers to sell digital assets based on such creators’ and publishers’ works.
  • Advised 98point6 on a series of transactions relating to its relaunch as a licensed software provider to focus on telehealth services.

Weil, Gotshal & Manges LLP

Weil, Gotshal & Manges LLP assists a large roster of blue-chip clients with technology and IP transactional matters, including patent acquisitions and divestitures, license arrangements, and technology and IP joint ventures. The department is jointly led by Charan Sandhu and Jeffrey Osterman from the firm’s New York office. While Sandhu has vast experience in complex technology and IP transactions as well as licensing agreements, Osterman’s practice focuses on technology outsourcing and integration as well as on patent and content licensing. Other notable members of the team are Karen Ballack in Silicon Valley, who advises on the development, commercialization and other exploitation of technology and IP, and New York’s Dennis Adams, whose practice spans across the technology and life science industries. Also in New York, Olivia Greer focuses on assisting clients with privacy and data security issues. Michael Epstein retired from the partnership in late 2022.


Practice head(s):

Charan Sandhu; Jeffrey Osterman


Other key lawyers:

Karen Ballack; Dennis Adams; Olivia Greer


Key clients

Advent International Corporation


AltC Acquisition Corp.


Avista Public Acquisition Corp. II


British Columbia Investment Management Corporation


Brookfield Business Partners L.P.


Cedar Fair, L.P.


CIIG Capital Partners II, Inc.


CPP Investments


Eli Lilly and Company


Glencore plc


Goldman Sachs Asset Management, L.P.


Greater Sum Ventures


Halozyme Therapeutics, Inc.


ICG Strategic Equity


Iron Mountain Incorporated


Jack Creek Investment Corp.


Keter Environmental Services, LLC


The Kroger Co.


Mudrick Capital Management


Sanofi S.A.


Work highlights


  • Advised The Kroger Co on the technology, data privacy and IP aspects of its merger with Albertsons Companies, Inc. in a transaction that implies an Albertson enterprise value of approximately $24.6bn.
  • Advising Glencore PLC, Canada Pension Plan Investment Board and British Columbia Investment Management Corporation, as the shareholders of Viterra Ltd. on the technology, data privacy and IP aspects of its approximately $18bn business combination with Bunge Ltd.
  • Advised CPP Investments, together with Silver Lake, on the technology, data privacy and IP aspects of its acquisition of Qualtrics in a transaction that implies a Qualtrics enterprise value of approximately $12.5bn from SAP SE.

Baker Botts L.L.P.

Baker Botts L.L.P. handles the full spectrum of licensing matters, fielding a team that is well-versed in advising on patent, copyright and trademark license agreements as well as on technology development, acquisition, distribution and research, and outsourcing agreements. The team also benefits from in-house IP litigation expertise, allowing it to handle all aspects of patent strategy and protection issues Christa Brown-Sanford co-heads the group from Dallas and focuses on patent procurement, litigation, and portfolio development, frequently handling licensing matters in related to telecommunications, electronics, and cutting-edge technologies. Co-head Jennifer Tempesta is based in New York and chiefly handles patent litigation. Luke Pedersen co-chairs the practice from Washington DC and covers a wide range of matters relating to intellectual property, placing a particular focus on technology transfers and patent portfolio management, while New York-based co-chair Paul Ragusa advises clients on patent litigation, inter-partes reviews, IP transactions, and licensing, including of standard-essential patents.

Practice head(s):

Christa Brown-Sanford; Jennifer Tempesta; Luke Pedersen; Paul Ragusa


Key clients

Cisco Systems, Inc.


Strattam Technologies


Columbia University


Toyota


University of Pennsylvania


Royalty Pharma


Memorial Sloan Kettering Cancer Center


Enghouse Interactive (UK) Ltd.


Vidyo, Inc.


CMC Materials


Fujifilm Holdings Corporation


Ericsson


Genentech Inc


Fathom5 Corporation


Fermata Energy


LG Electronics


Lennox International


Oxford Nanopore Technologies plc.


Editas Medicine


Work highlights


  • Advised Cisco on patent licensing, strategic portfolio development, defensive patent analysis, and overall counselling and patent strategy.
  • Advised Royalty Pharma on due diligence reviews of patent portfolios, licensing agreements, and sponsored research agreements, as well as on the strength and scope of patent protection around a royalty-bearing product prior to the client’s investment or acquisition.
  • Assisted 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

Finnegan, Henderson, Farabow, Garrett & Dunner LLP‘s IP management and transactions section assists clients in IP-related transactions, IP licensing, and with their IP portfolios. The mechanical practice group is led by Brian Kacedon in Washington DC, who focuses on patent and technology licensing and litigation. Managing partner Erika Harmon Arner handles patent litigation related to computer software and electronic technology, while firm chair Anand Sharma handles patent portfolio management and strategy in addition to representing clients in litigation. Reston-based lawyer Elliot C. Cook advises his clients on patent litigation, portfolio development, and patent prosecution. Patent attorney Michele C. Bosch has a diverse practice with an emphasis on post-grant proceedings, while Virginia L. Carron in Atlanta counsels clients on diverse licensing and related transactional matters. In October 2023, Boston partner Nishla H. Keiser re-joined the firm from an in-house role at Orna Therapeutics. Unless otherwise mentioned, listed contacts are based in Washington DC.


Practice head(s):

Brian Kacedon; Erika Harmon Arner; Anand Sharma


Other key lawyers:

Michele C. Bosch; Virginia L. Carron; Nishla H. Kaiser


Key clients

BMW of North America


Corteva, Inc.


Darfon Electronics Corp.


Dukosi Ltd


Eisai Co, Ltd.


Ecovyst Catalyst Technologies LLC


Lockheed Martin Corporation


Megagon Labs


Work highlights


  • Assisted Megagon Labs with developing its patent portfolio directed to cutting-edge AI technologies as well as with open-source licensing matters.

Kirkland & Ellis LLP

Fielding a team that is experienced in patent licensing, patent portfolio management, and patent infringement litigation, Kirkland & Ellis LLP counts both patent licensors and licensees in its diverse roster of life sciences and tech clients. Key contacts in the team include tech M&A specialist Seth Traxler, who is based in Chicago, and John Lynn, who divides his time between San Francisco and Austin and advises on the tech, data protection, and AI elements of corporate and financing transactions. New York’s David MacDonald frequently works on technology transactions, licensing agreements on behalf of pharmaceutical and biotechnology companies, and settlement agreements in patent litigation. In his dispute resolution-oriented practice, Chicago-based Russell Levine emphasizes patent infringement matters and disputes relating to technology transfer and patent licensing agreements. Los Angeles’ Ellisen Turner is a key name for complex patent licenses and technology transactions, and in New York, Shellie Freedman is adept at handling IP joint ventures and strategic alliances in addition to licensing matters.

Other key lawyers:

Seth Traxler; John Lynn; David MacDonald; Russell Levine; Ellisen Turner; Shellie Freedman; Robert Appleby; Alan Rabinowitz


Testimonials

‘Kirkland has a deep bench of experienced patent litigation and transactional attorneys that provide a full range of services for companies seeking to mitigate risk from third-party patents. Kirkland is one of few firms that have attorneys with the level of transactional expertise we need to assist our patent transactions team.’

‘David MacDonald is an exceptional transactional attorney who provides us with excellent counsel on some of our most challenging transactional matters.’

‘Robert Appleby is a very talented and experienced patent litigation attorney who represents us in some of our most high-risk patent assertion and litigation matters.’

‘Alan Rabinowitz is a very talented patent litigator who counsels us on some of our most high-risk assertion and litigation matters.’

Key clients

AutoStore


Open Invention Network


Work highlights


  • Advising Open Invention Network, a joint venture of nine companies and 3800+ licensing participants from 100+ countries, on its patent non-aggression activities and its support of the freedom of action with respect to the Linux operating system.
  • Represented AutoStore in the complete settlement of all claims in their global litigation with Ocado Group, which included mutually beneficial global cross-license of each other’s pre-2020 patents.

Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP‘s intellectual property practice features IP practice head Louis Beardell in Philadelphia, IP deputy practice lead Dion Bregman in Silicon Valley, Princeton-based leader of the life science practice Alan Leeds and deputy life sciences head Benjamin Pensak, who shares his time between Chicago and San Francisco. This consortium of lawyers brings together expertise for licensing, commercial, and technology transactions, regularly advising on patent licensing, IP strategy, collaborations, strategic alliances, and joint ventures, in addition to providing clients with standards body advice. The group works on the prosecution and counseling of life science and chemistry patents, business methods and e-commerce patents, and electrical, mechanical, and software patents. Silicon Valley’s Rahul Kapoor is noteworthy for his transactional experience in technology-licensing deals.


Practice head(s):

Louis Beardell; Dion Bregman; Alan Leeds; Benjamin Pensak


Other key lawyers:

Rahul Kapoor; Andrew Antczak; Victor Ghidu; Martin Henshall; Kelly Plummer


Testimonials

‘Efficiency, efficiency, efficiency. The team has the experience and understanding of the biotech industry required to take the next step from a pure legal advisor to a business partner who can cut through many of the issues that inevitable crop up in negotiations and focus on the high-value issues that can impact company value and partnering options down the line.’

‘Ben Pensak has a wonderfully practical approach to contract negotiation. He understands the industry and the issues that inevitably crop up in negotiations. He also understands that we don’t need to fight on every point. Ben’s singular focus is getting the client to a deal that works for both parties efficiently and on budget.’

‘Alan Leeds stands out among peers for his knowledge of pharmaceutical industry licensing and is an invaluable partner to our business. He effectively balances counseling with execution and has helped us deliver for our organization more times than I can count. He is accessible, genuinely likable, and committed to strong client service.’

 

Key clients

Merck


Regeneron Pharmaceuticals Inc.


Intel Corporation


Western Digital


SRI International


Eli Lilly and Co.


Alexion


LIB Therapeutics, Inc.


Takeda Pharmaceutical Co.


Work highlights


  • Represented Merck in its global development and commercialization agreement for three of Daiichi Sankyo’s DXd antibody-drug conjugate candidates, in a transaction implying a $4bn upfront payment and $1.5bn in continuation payments as well as potential additional payments of up to $16.5bn contingent upon the achievement of future sales milestones.
  • Advised SRI International on an agreement to receive the Palo Alto Research Center, a research and development organization and Xerox company.
  • Advised Takeda on its strategic discovery collaboration license agreement with F-star Therapeutics.

Ropes & Gray LLP

Ropes & Gray LLP is noted for its ability to advise on IP transactions and licensing, structure the IP and technology aspects of major strategic and private equity-backed M&A, and handle strategic patent and trademark portfolio management. The team further stands out for its strength in handling the sale and financing of royalty interests and IP litigation. The intellectual property transactions practice is led by Melissa Rones in Boston and Megan Baca in Silicon Valley. Frequently advising various life science companies, David McIntosh and Marc Rubenstein are key names in Boston. Also based in Boston and advising clients across the life sciences and biotech sectors are Abigail Gregor, Hannah England, Amanda Austin, and Regina Sam Penti. New York’s Jordan Altman joined the team from Shearman & Sterling LLP in April 2023. In July 2023, Violetta Kokolus  left the team.

Practice head(s):

Melissa Rones; Megan Baca


Other key lawyers:

David McIntosh; Marc Rubenstein; Jordan Altman; Abigail Gregor; Hannah H. England (Freeman); Amanda Austin; Regina Sam Penti; Raj Banerjee


Key clients

Pfizer


Takeda Pharmaceuticals


TPG Capital


Novo Nordisk


HUTCHMED (China) Limited


HUTCHMED Limited


BPEA Private Equity Fund


TRexBio


Radius Pharmaceuticals


Vince Holding Corp.


UniQure


Kohlberg & Company


HP Inc


Work highlights


  • Advised Pfizer on a partnership with Flagship Pioneering to develop 10 single-asset programs by leveraging Flagship’s ecosystem of more than 40 human health companies and multiple biotechnology platforms for up to $7bn.
  • Advised Novo Nordisk on a collaboration and license agreement with Valo Health for up to $2.7bn to discover and develop novel treatments for cardiometabolic diseases.
  • Advised HUTCHMED (China) Limited on a worldwide license agreement with Takeda Pharmaceutical for the development, commercialization, and manufacturing of HUTCHMED’s colorectal cancer treatment outside of mainland China, Hong Kong and Macau for up to $1.13bn.

Cleary Gottlieb Steen & Hamilton

The intellectual property team at Cleary Gottlieb Steen & Hamilton LLP handles large domestic and cross-border technology transactions and includes practitioners with expertise in working with software and software-related companies across the country. The team also regularly assists clients with data protection and other technology-related issues arise in the course of their transactional activities. The ‘extremely thorough and intelligentDaniel Ilan oversees the department in New York and has experience advising multinational corporations and private equity firms on IP, technology, cybersecurity, and privacy matters. With extensive experience in high-profile technology transactions, Marcela Robledo spearheads the practice in the Bay Area. In New York, Brendan Cohen and Melissa Faragasso are further members of the team.

Practice head(s):

Daniel Ilan


Other key lawyers:

Marcela Robledo; Brendan Cohen; Melissa Faragasso


Testimonials

‘Daniel Ilan is extremely thorough and intelligent.’

Key clients

Advent International Corporation


American Tower


Applied Materials


Atlassian Pty Ltd


Johnson Controls, Inc


Miami International Holdings


OpenText


Palantir


Synopsys, Inc


Tempur Sealy International


Thales


T-Mobile


Voya Financial


Warburg Pincus


Western Digital


Work highlights


  • Represented OpenText in several matters, including in its recommended offer to acquire the entire share capital of Micro Focus for approximately $6bn.
  • Advised Western Digital on several matters, including in amendments to its existing term loan and revolving loan agreement and delayed draw term loan agreement valued at $5bn.
  • Advised Thales SA on several matters, including its acquisition of Imperva Inc. from Thoma Bravo for $3.6bn.

Davis Polk & Wardwell LLP

Davis Polk & Wardwell LLP advises leading enterprises and organizations on stand-alone IP, technology, outsourcing and other commercial issues arising from licensing, collaboration, R&D, and securitization. The team is particularly experienced in handling matters surrounding patent rights, patent prosecution, and the scope and transferability of licensing agreements. Frank Azzopardi is the head of the team and is noted for his ability to in structure and negotiate commercial transactions and advise on IP and tech-related issues. David Bauer covers IP and technology-related corporate and commercial transactions, including licensing and collaboration agreements, and Pritesh Shah is a key contact for advising on the IP and data privacy aspects of licensing and M&A transactions. Another key team member is Matthew Bacal, who maintains close relationships with clients active in the AI space. All named attorneys are based in New York.

Practice head(s):

Frank Azzopardi


Other key lawyers:

David Bauer; Pritesh Shah; Matthew Bacal


Key clients

ABB


Allegro Microsystems


Alarm.com


Alpha Capital Acquisition


American Well


Annaly Capital Management


Ankura Consulting


A.P. Moller – Maersk


Asplundh


AssetMark Financial


Atairos


Baker Hughes


Bansk Group


Bath & Body Works


Bausch Health


Bausch + Lomb


BDT Capital Partners


Bertelsmann


Billtrust


Bio-Reference Laboratories


Blanqet


Bridgepoint Capital


Brookfield Asset Management


BRP Group


Campbell Soup


Cellular Biomedicine Group


Circle Internet Financial


Comcast


Cornell Capital


Crestview


Crowdstrike


cxLoyalty


Delta Air Lines


DexKo Global


Digicel


Dow Jones Indices


Elliott Management


Emerson Electric


European Biotech Acquisition


FactSet


Ferrero


Foursquare


Francisco Partners


Freeport-McMoran


Galaxy Digital


General Dynamics


General Electric


GeoPark


GHK Capital


Gilead Sciences


GoDaddy


Golub Capital


Google


Goosehead Insurance


GrubHub


GSK


Heineken


Hemisphere Media Group


Hexion


HP


IBM


IHS Markit


InSilico Medicine


Iris Energy


J.P. Morgan


KPS Capital


Kosmos Energy


Lavoro


LendingTree


Lightyear Capital


Livent


Loews Corporation


The Los Angeles Dodgers


Lucid Motors


McDonald’s


McKesson


Monarch Alternative Capital


MoneyLion


Morgan Stanley


My Green Lab


MSCI


Natura


Natus Medical


NBCUniversal


NYDIG


Ocado Group


One Madison Corporation


On Holding


Pactiv Evergreen


Penguin Random House


PJT Partners


Pony.ai


PricewaterhouseCoopers


Qorvo Biotechnologies


Ranpak


The Related Companies


Reckitt Benckiser


Red Ventures


Reliance Industries


Remitly Global


Rentokil


REV Group


Reverence Capital


Robinhood


Roche


Roper Technologies


S&P Global


SLM


Satixfy Communications


Schwab


Sesajal


Shire


Shiseido


SIFMA


Signify Health


Sirio Pharma


Solvay


SouthState Bank


Summit Materials


Sun Pharmaceuticals


Spectrum Brands


Spirit Airlines


SS&C Technologies


SSW Partners


State Street


StoneX


SUEZ


SwitchFly


Synovus


Taboola


Tailwind Capital


Takeda Pharmaceutical


Technip


Texas Instruments


Tory Burch


TPG


Traton


Trilantic


TruArc


The University of Michigan


Vasta Platform


VersaBank


Verisk


VF


Virgin Investments


Work highlights


Dickinson Wright PLLC

Dickinson Wright PLLC‘s coast-to-coast IP licensing/transactions practice group is comprised of patent attorneys, many of whom who have an engineering background and bring together the necessary expertise to advise on software licensing, technology licensing for universities, cross-licensing to resolve disputes, and traditional patent licensing. Adept in a wide range of intellectual property matters, especially to do with mechanical and electrical technologies, group head and ‘star in the licensing area’ Richard A. Jones in Troy has vast experience in negotiating patent licensing agreements and resolving IP disputes for his major automotive and material handling clients. In Austin, Lance Anderson deals with technology and intellectual property-focused transactions, Steven Daniels has extensive experience litigating intellectual property disputes, Andrea L. Arndt specializes in the international prosecution of patents and trademarks,  and Stephen Mason advises early-stage technology startups on a diverse range of IP issues.

Practice head(s):

Richard A. Jones


Other key lawyers:

Lance Anderson; Steven Daniels; Andrea L. Arndt; Stephen Mason


Testimonials

‘Richard Jones is a star in the licensing area. His experience and expertise are highly valued. He is our go-to person for handling complex IP licensing and transactional matters.’

Key clients

Western Digital Corp.


Work highlights


  • Advising Western Digital on an ongoing basis on high-volume patent prosecution.

Knobbe Martens Olson & Bear LLP

Knobbe Martens Olson & Bear LLP‘s team is noted for its expertise in patent licensing and transactions and covers the full spectrum of technologies, industry sectors and IP practice areas. The team is also equipped to handle contentious matters, with extensive experience in litigation and prosecution in connection with patent procurement. ‘Outstanding’ trademark portfolio management specialist Salima Merani and patent procurement expert Sabing Lee jointly lead the medical device group, while Jason Gersting is the chair of the IP and tech transaction group. In San Diego, Kimberly Miller delivers the full range of advice for all IP-related matters. Adam Gilbert retired and Lori Yamato departed the firm  in January 2023. Unless otherwise stated, all team members are based in Orange County.

Practice head(s):

Salima Merani; Sabing Lee; Jason Gersting


Other key lawyers:

Kimberly Miller; David Cohen; Jordan Gottdank; Kregg Koch; Sabrina Wang; Brandon Smith


Testimonials

‘Salima Merani and Jason Gersting are responsive and possess excellent knowledge.’

‘Salima Merani is outstanding, and she is simply wonderful and the best! She is extremely client-focused, tireless and is very talented in what she does. Salima is a strategic thinker who understands our business and risks. She is smar  and business-minded, anticipates our needs, and is always solution-focused. She approaches issues from a pragmatic perspective, and provide us with both business and legal advice.’

‘The team has decades of experience with licensing from academic institutions. The depth of their knowledge and the big picture strategy they think of is quite remarkable.’

‘Salima Merani is an outstanding attorney. She uses good judgment in licensing negotiations, is forceful in advocating for her clients, and finds ways around obstacles so that the agreement is a win-win.’

‘Expertise in technology and licensing requirements.’

‘Knowledge and performance is exceptional, also in high number deals and under time pressure.’

Key clients

Relievant Medsystems


Augmedics, Inc.


Paragonix Technologies, Inc.


Novonate, Inc.


AcuFocus, Inc.


LimFlow SA


AVITA Medical, Inc.


Masimo Corporation


Zentalis Pharmaceuticals, Inc


Evident Vascular


Cala Health, Inc.


Work highlights


  • Advised Relievant Medsystems on its acquisition by Boston Scientific for $850m plus additional milestone payments.
  • Advised Paragonix Technologies, Inc. on securing $24m in Series B funding, led by Signet Healthcare Partners.
  • Assisted LimFlow SA with entering into a deal to be acquired by Inari Medical for $415m and advised on IP acquisition due diligence.