Technology transactions in United States
Cooley LLP advises online media and education start-ups, telecoms companies, fintech groups and software companies on M&A-related technology transactions, licensing deals and development agreements. Of recent note, T’Challa Jabari Graham, who joined the Palo Alto office from Wilson Sonsini Goodrich & Rosati in March 2018, advised Adaptive Insights on its $2bn acquisition by Workday. Washington DC-based Adam Ruttenberg renegotiated a strategic alliance between WeWork and client 2U, an online platform designed to offer higher education services. Denver-based practice head Keith J. Berets assisted telecoms provider Telestra with the spin-out of the video platform company Ooyala. Softbank, SeatGeek and online mobile lending service Welab Holdings are also among the team's clients. Adam Chase is another contact in the Washington DC office.
The ‘very capable, diligent, responsive and pro-active’ team at Fenwick & West LLP handles technology patent transactions as well as outsourcing and M&A-related technology licensing deals. Noted for its ‘excellent ability to digest technical and complex information’, the ‘solutions-oriented’ practice group has an impressive client roster, which includes blockchain developers, automotive companies, fintech groups and healthcare companies. San Francisco-based Ralph Pais has ‘years of practical experience in making the impossible possible’; he recently represented the cloud financial management company Intacct Corporation in its acquisition by the business management software producer The Sage Group. Also in San Francisco, Stefano Quintini advised the biotechnology start-up Invenra on its collaboration and license agreement with pharmaceuticals company Exelixis; practice head Jake Handy (‘exceptional, brilliant, creative and efficient’) assisted in that matter. Vejay Lalla joined the New York office from Davis & Gilbert LLP in July 2018.
Goodwin handles M&A involving complex licensing, patent and software issues, and also has expertise in standalone commercial transactions including software leasing agreements and technology development contracts. Pre-empting a planned public offering, the firm advised software company Qualtrics on its $8bn acquisition by SAP. John J. Egan acted for internet software company AppNexus in the negotiation of an agreement to join AT&T’s advertising and analytics platform. Further, the firm advised software company Kensho Technologies on its sale to S&P Global for an aggregate purchase price of $550m. Other key figures include joint practice heads Kenneth J. Gordon and Silicon Valley-based Anthony J. McCusker, Stephen G. Charkoudian, and Robert E. Bishop and Robert G. Kester, who are rated for their ability to ‘drive a deal to a successful close’. Jon M. Novotny and Joshua Cook joined the San Francisco office from Gunderson Dettmer LLP in October 2018, while Washington DC-based Julie K. Tibbets joined from Alston & Bird LLP in February 2018. Named lawyers are based in Boston unless stated otherwise.
Hogan Lovells US LLP
Hogan Lovells US LLP has extensive expertise in the negotiation and drafting of commercial contracts and technology licensing agreements in industry sectors including healthcare, software, media and fashion. The team has been assisting Regal Entertainment Group with the development and licensing of software and technology usage rights in connection with the IPO of an affiliated business partner. Northern Virginia-based Cullen G. Taylor has acted for Incyte Corporation in a licensing and collaboration agreement with MacroGenics in relation to the development and commercialization of an antibody. Other key individuals include San Francisco-based John Brockland, Washington DC-based communications practice head Michele C. Farquhar, and Meryl Rosen Bernstein and William J. Curtin III, who both divide their time between the New York and Washington DC offices.
Kirkland & Ellis LLP has expertise in IT outsourcing, technology licensing agreements and patent transactions in the context of M&A deals. Jointly headed by Neil Hirshman and Chicago-based Seth Traxler, the team advised The Boeing Company on a joint venture and IP licensing agreement with Safran for the design and manufacture of aircraft auxiliary power unit systems. Further, Vladimir Khodosh assisted Accenture Digital in the licensing of satellite imagery and an internet of things development platform. The department has also seen a number of new joiners in 2018-2019: Adam Petravicius joined the team from Jenner & Block LLP, Kate Withers joined from Fenwick & West LLP, and Shellie Freedman joined the New York office from Gibson, Dunn & Crutcher LLP. Additionally, Matthew Colman was promoted to partner in October 2018. Edward Sadtler joined Schulte Roth & Zabel LLP in April 2019. Named lawyers are based in Chicago unless stated otherwise.
Latham & Watkins LLP is well known for handling commercial technology and IP licensing transactions in industry sectors including financial services, retail and telecoms. Recently promoted partner Ghaith Mahmoud, who is based in Los Angeles, has been advising Tencent Holdings on contractual risks involved with certain IP licensing and software distribution arrangements. San Francisco-based J.D. Marple represented the fintech company Digital Asset Holdings in contractual negotiations with the Australian Stock Exchange to replace the post-trade settlement system with a blockchain solution. The team is also acting for prominent grocery store operator Safeway in the sale of its Canadian division to the retailer Sobeys, which involves the negotiation of a transition services agreement pursuant to which the client will provide IT services to the purchasing party. Silicon Valley-based practice head Anthony R. Klein is also recommended.
Weil, Gotshal & Manges LLP regularly handles technology and IP acquisitions and disposals, outsourcing transactions and licensing and development agreements. New York-based Jeffrey Osterman advised Sanofi on the technology and IP aspects of its $11.6bn acquisition of Bioverativ, a company involved in the treatment of blood disorders. Further, practice head Michael Epstein, also based in New York, advised The Campbell Soup Company on its $6.1bn acquisition of Snyder’s Lance – a manufacturer and marketer of snack food products. Other M&A-related technology transactions included assisting the chemical distributor Nexeo Solutions with its $2bn sale to Univar, a distributor of specialty chemical products.
Wilson Sonsini Goodrich & Rosati
Wilson Sonsini Goodrich & Rosati regularly assists software technology, life sciences and robotics companies with outsourcing, IP and technology transactions linked to M&A deals. Jointly headed by Washington DC-based James G. Clessuras and Ian Edvalson, who divides his time between Palo Alto and San Diego, the practice group has been advising app developers, wireless providers and component manufacturers of wearable devices on the drafting and negotiation of technology and trademark licensing agreements. Other contacts include New York-based Daniel C. Glazer and Miranda Biven, who divides time between San Diego and Palo Alto, and focuses on licensing arrangements in the life sciences sector. Further, Palo Alto-based John McGaraghan and Matthew Wiltermuth were promoted to partner in February 2018, while T’Challa Jabari Graham left the Palo Alto office for Cooley LLP in March 2018.
Baker Botts L.L.P.
Baker Botts L.L.P. is instructed by clients from the automotive, telecoms and pharmaceutical industries, which it advises on joint venture and M&A-related technology transactions, development agreements and licensing contracts. Houston-based Felix Philips acted for AT&T in a $1.1bn agreement to sell its data center co-location operations and assets to Brookfield Infrastructure, and Dallas-based practice head Samantha Hale Crispin advised Toyota Motor North America on multiple joint venture agreements with Shell Oil Products and Kenworth to develop hydrogen fuel cell technologies. Other highlights include assisting long-standing client Cisco Systems with patent management and technology licensing agreements as well as with product development. San Francisco-based special counsel Tai Hsia joined the team in June 2018.
Cravath, Swaine & Moore LLP has extensive experience advising blockchain, media, biotech and software companies on matters including joint venture and M&A-driven technology licensing deals and development contracts involving cybersecurity and artificial intelligence. Faiza J. Saeed and practice co-head David J. Kappos, who are both based in New York, are advising The Walt Disney Company in connection with its pending $85bn acquisition of 21st Century Fox, which involves agreements for a multitude of copyright-based domain names and film production technology. Kappos also advised Biogen on its expansion of its existing agreement with pharmaceuticals company Eisai to jointly develop and commercialize certain Alzheimer’s disease treatments. Other New York contacts include Keith Hallam and practice co-head George F. Schoen, the latter of whom acted for Warner Media in its investment in NewTV as a part of its $1bn initial funding round. Allison M. Wein was promoted to partner in January 2019.
Davis Polk & Wardwell LLP
The team at Davis Polk & Wardwell LLP regularly advises on intellectual property, technology and outsourcing matters arising from licensing, collaboration and research development relations. Recent highlights included practice head Frank J. Azzopardi assisting The Ferrero Group with its $2.8bn acquisition of Nestlé US, which involved various agreements for trademark licensing and the use of shared production facilities, and Pritesh Shah acting for General Electric in relation to the $11.1bn merger of GE Transportation and the railway technology provider Wabtec Corporation. In addition, recently promoted partner David R. Bauer is acting for Forward Pharma in the negotiation and drafting of licensing and patent settlement agreements in connection with the restructuring of the client’s business. All named attorneys are based in New York.
DLA Piper LLP (US)
The ‘highly skilled, incredibly competent and professional’ practice group at DLA Piper LLP (US) is well known for its ‘extensive global connections’ and is rated by clients for its ‘quick turnaround on complicated projects’. Palo Alto-based Jeffrey Aronson (‘an exceptional and knowledgeable transactional attorney’) assisted Silicon Laboratories with its $282m acquisition of the semiconductors company Sigma Designs. Further, Washington DC-based Nancy Victory and Michael Senkowski acted for T-Mobile US and Deutsche Telekom in FCC negotiations regarding the announced merger between T-Mobile and Sprint Corporation. Silicon Valley-based global co-chair Victoria Lee is also recommended.
Gibson, Dunn & Crutcher LLP
Gibson, Dunn & Crutcher LLP advises on the full range of commercial technology transactions and large corporate deals with significant technology components. In New York, Stephen D. Nordahl and practice co-head Daniel Angel acted for Johnson & Johnson in its $10bn sale and outsourcing of 60% of its manufacturing capabilities and facilities for implantable medical devices to the manufacturing services company Jabil. Further, Palo Alto-based co-head Shaalu Mehra has been advising Ford Motor Company on its $1bn collaboration with Argo concerning the development of autonomous vehicle technology. The team also assisted DR Horton, one of the largest home builders in the USA, with various software, cloud services and technology agreements. Also of note, practice co-head Carrie LeRoy joined the Palo Alto office in February 2018 from White & Case LLP.
Morgan, Lewis & Bockius LLP has particular expertise in the business application of blockchain technology, and is also experienced in cybersecurity projects and data exchange platforms. Philadelphia-based practice heads Michael L. Pillion and Barbara M. Melby are acting for BOX Options Exchange in relation to a blockchain and surveillance technology license and services agreement as a basis for StokynX, a joint venture that will operate as a regulated exchange for the trading of security tokens. New York-based Vito Petretti and Doneld G. Shelkey in Boston advised Colgate-Palmolive on negotiations regarding a strategic sourcing and contract management platform, and also assists the client with the management of a portfolio of IT transactions. Philadelphia-based associate Christopher C. Archer is also recommended, and Jeffrey S. Dinerstein joined the Houston office from Jones Day in June 2018.
Morrison & Foerster LLP
Morrison & Foerster LLP advises on the establishment of technology development joint ventures, technology and software licensing agreements and the outsourcing of technology-based business operations. Northern Virginia-based Thomas Knox has expertise in the cybersecurity, media and transportation sectors, and Vivian L. Hanson in New York is especially active in the areas of software and IT. Contacts in San Francisco include practice co-head Aaron P. Rubin, who regularly advises life sciences and healthcare companies, and Paul E. Jahn, who acted for Airmap, a provider of air traffic management systems for drone operations, in its transaction with the navigation systems operator Skyguide to enable the provision of air map services. Also recommended in San Francisco are William I. Schwartz and of counsel Scott Reynolds Carter. John F. Delaney left the New York team for Perkins Coie LLP in January 2019.
Skadden, Arps, Slate, Meagher & Flom LLP
Skadden, Arps, Slate, Meagher & Flom LLP advises corporates in the media, software development, telecoms and publishing industries on IP commercialization and M&A-related technology transactions. The team has advised Broadcom Corporation on the $147m sale of Ethernet controller-related assets and IP licenses to QLogic Corporation. Kenton J. King and practice head Leif B. King are key figures in the Palo Alto office. Also recommended is Washington DC-based Ivan A. Schlager, who heads the national security practice, and has been instructed by a number of prominent telecoms, cybersecurity and aviation companies.
The ‘dedicated team’ at Venable LLP is noted for its ‘exceptional service' in high-value licensing and development agreements. Recent highlights include acting for a hotel company in an agreement for the development of a central reservations system, and advising a payment processing company on an agreement for the integration of the client’s payment processing technology into third-party billing platforms. The practice group is jointly headed by Armand J. Zottola and Nora E. Garrote in Washington DC; another key contact, William T. Russell, divides his time between Washington DC and New York and provides ongoing advice to General Electric on the structuring and negotiation of technology-driven deals in support of its energy and digital solutions businesses. New York-based Eric A. Prager joined from K&L Gates in June 2018.
Jointly headed by Steven D. Barrett and Belinda M. Juran, WilmerHale advises on a wide range of technology development and licensing deals in the fintech, education, software and construction sectors. Michael J. Bevilacqua is assisting Commonwealth Fusions System with joining the MIT Energy Initiative, a university-industry partnership to develop high-temperature superconducting magnets for commercially viable fusion power plants. Further, Jeff P. Johnson advised Educational Testing Service on the IP and technology transfer aspects of its $1.1bn sale of test development and delivery provider Prometric to Baring Private Equity Asia. All named attorneys are based in Boston.
Baker McKenzie LLP handles telecoms contracts, outsourcing agreements and software licensing agreements for clients in the e-commerce, blockchain, IT and media industries. Practice co-head Michael S. Mensik acts for computer and telecoms companies in the development of joint ventures and outsourcing arrangements and Samuel G. Kramer has expertise in IT procurement and licensing contracts in the blockchain sector. Also recommended is Peter R. George, who has advised publishers on the transfer of test and production data from data centers to third-party providers of cloud services. A key contact in the Washington Dc office is Sonia Baldia, who focuses on technology development and licensing in the software and mobile commerce sectors. Named partners are based in Chicago unless otherwise noted.
Foley & Lardner LLP
Foley & Lardner LLP has experience of technology-related joint ventures, software licensing and the drafting and negotiation of technology transfer agreements. In Los Angeles, James R. Kalyvas heads the practice and advises IT companies on outsourcing contracts and licensing agreements, while Michael R. Overly has particular expertise and technology transfers in the automotive, healthcare, and e-commerce and payments technology sectors. Other key lawyers include Dallas-based Guy F. Birkenmeier, who specializes in the biotech-, healthcare- and pharmaceuticals-related deals, and Kay Schwartz, who has expertise in IP and is also based in Dallas.
Headed by Michael B. Woodard in Richmond, the team at McGuireWoods LLP has particular expertise in fintech and advanced software-related projects, where it advises across the gamut of IP and licensing arrangements. Other contacts in the department include Rakesh Gopalan in Charlotte, and Chicago-based Steve Gold, who has been advising energy service provider Direct Energy on a pilot project to utilize blockchain technology in an electricity procurement application. The practice group saw several personnel changes in 2018: Dallas-based Stuart M. Rasley joined the team from Squire Patton Boggs, Rebecca A. Brophy joined the Raleigh office from Smith Anderson, and Chicago-based Gregory P. Hawver joined from Winston & Strawn LLP; in San Francisco, however, Lior O. Nuchi left for Norton Rose Fulbright, while Elliot Katz left to found an automotive company.
Orrick, Herrington & Sutcliffe LLP has been especially active in the fintech, healthcare and automotive sectors, and recently advised Alta Motors on its collaboration with Harley-Davidson for the development and commercialization of electric motorcycle technology. The team is jointly headed by Glynna Christian in New York and Daniel Yost Silicon Valley. Also recommended is San Francisco-based Anik Guha, who advised the website and online publishing platform Verst on the acquisition of its staff by Dropbox. In 2018, Ellen Ehrenpreis joined the Silicon Valley office from Edgewood Law Partners, and Geoff Willard joined the team in Washington DC. Josh Pollick, who divides his time between Santa Monica and San Francisco, was promoted to partner in January 2018.
Paul Hastings LLP
Paul Hastings LLP is regularly involved in technology transactions involving software, biotech and healthcare, and internet services. In New York, Samuel A. Waxman has advised Deerfield Innovations on the creation of Bluefield Innovations, a collaborative therapeutics partnership with Johns Hopkins University, with the aim to commercialize certain therapeutics research. Additionally, the team advised Phosplatin Therapeutics on a collaboration agreement with Pfizer and Merck for the evaluation of an oncology molecule in combination with an antibody. Other key partners include Los Angeles-based David M. Hernand, and Steven L. Camahort and Dana C. F. Kromm, both of whom are based in the San Francisco office. In Palo Alto, Tiffany Lee and Matthew D. Berger left the practice group in December 2018 and joined Willkie Farr & Gallagher LLP.
Proskauer Rose LLP is well known for its extensive asset manager client base, which provides a steady stream of work in the retail, leisure and media industries. Jointly led by New York-based Jeffrey D. Neuburger and Robert E. Freeman, the team is advising Component Assembly and construction industry analytics provider C/F Data on technology licensing and outsourcing agreements, which recently included an investment in a blockchain-based construction company through a SAFE agreement. The firm also advised the internet media company VerticalScope on certain outsourcing, licensing and intellectual property agreements. Also recommended is Daryn A. Grossman, who is also based in New York. Paresh Trivedi left the practice in July 2018 for an in-house role.
Leveraging an enviable private equity client base, Simpson Thacher & Bartlett LLP ‘provides extremely practical advice’ on licensing, outsourcing and co-development arrangements in the media, banking and automotive sectors. New York-based practice head Lori E. Lesser ‘recognizes critical nuances’ and is ‘a true difference maker, who provides clients with a competitive advantage in any negotiation’; she advised Blackstone on a $20bn partnership agreement with Thomson Reuters for its Financial & Risk Business, which provides data analytics services for the client’s data and financial technology platform. Counsel Marcela Robledo, who is based in Palo Alto, assisted Alibaba with a strategic retail partnership agreement with Starbucks that involves the technological integration of several coffee delivery platforms into one single online store.
White & Case LLP
White & Case LLP handles technology licensing and development contracts for financial institutions, healthcare companies and IT companies, primarily in the context of joint venture arrangements and M&A. Silicon Valley-based Daren Orzechowski acted for Nestlé México in its acquisition of a majority in Terrafertil, a company selling organic food. Other significant client have included the Saudi Arabian Football Federation, the pharmaceutical company Roivant Sciences as well as prominent private equity firms including CVC Capital Partners. Arlene Hahn is also highly regarded. Howard Wettan joined the Silicon Valley office in June 2018, having previously served as the vice president of Visa; however, Palo Alto-based Carrie LeRoy left the firm for Gibson, Dunn & Crutcher LLP. The global practice group is headed by Jost Kotthoff in Frankfurt, Germany.
Bracewell LLP handles the IP aspects of technology transactions, including high-value licensing deals, for clients including healthcare companies, insurers, retailers and financial institutions. Jointly headed by Dallas-based Janice Z. Davis and Houston-based Jeffrey B. Andrews, the practice group advised East Texas Medical Center Regional Healthcare System on its sale of certain assets to Ardent Health Services, which involved the transfer of technology contracts. The firm also assisted the University of Texas MD Anderson Cancer Center with the negotiation of a sublicensing agreement with Intrexon Corporation and Ziopharm Oncology concerning IP emanating from the University of Minnesota for the development of non-viral adoptive cellular cancer therapies. Thomas W. Adkins, who is based in Austin, has been advising the online retailer Overstock.com on licensing arrangements for blockchain technology for its subsidiary Medici Ventures. Other clients have included Xiaomi Corporation, Cox Insurance Group and Natural Dental Implants.
The New York-based team at Cleary Gottlieb Steen & Hamilton is especially active in the healthcare, IT, banking and consumer products sectors, where it advises on technology licensing, IP agreements and large R&D projects. Joint practice heads Daniel Ilan and Leonard C. Jacoby advised Henkel on a $485m IP matter in connection with its acquisition of the hair professional business Zotos International. In addition, the team assisted American Express with the back-end and front-end technology aspects of its co-brand credit card partnership with Amazon. Other recent highlights included advising Google on a $1.1bn business corporation agreement with HTC, which included the acquisition of a license for HTC’s intellectual property; and assisting FIFA with the evaluation of the United States’ bid to host the 2026 Soccer World Cup, which involved various merchandizing, brand and copyright considerations.
Dentons handles a full range of commercial technology deals, from M&A-related transactions to standalone contracts such as development, licensing, outsourcing, and sales and distribution agreements. Joel N. Bock in Short Hills advised New York Power Authority on the negotiation of an agreement for an energy management platform to oversee and manage all governmental energy usage in the state of New York. Silicon Valley-based Robert F. Kramer advised Nistica, a supplier of optical modules for high-bandwidth applications, on a number of licensing and development agreements. The team is headed by Victor H. Boyajian in the New York office, where Brian Lee was recently promoted to partner. Los Angeles-based counsel Gregory R. Carney joined the firm from Morrison & Foerster LLP in August 2018.
Hunton Andrews Kurth LLP
Hunton Andrews Kurth LLP regularly handles IT-related transactions in the computing and software industries, and has recently advised on development joint ventures in the mobile and online payments arena. Richmond-based practice co-head Randall S. Parks advises medical device manufacturer Zimmer Bioment Holdings on software licensing and acquisition deals, and Washington DC-based Cecilia Y. Oh has assisted financial institutions with various technology agreements. Also in Washington DC, practice co-head Tyler Maddry has been instructed by IT, cloud and cybersecurity services providers.
Dallas-based Shawn C. Helms and Jason D. Krieser jointly head the team at McDermott Will & Emery LLP, which advises on outsourcing, licensing and cloud computing arrangements in the telecoms, IT, healthcare, social media and e-commerce sectors. Other contacts include David Guedry and Heather S. Bethancourt, also in Dallas, and Sarah T. Hogan, who practices in the firm's Boston office. Highlights have included advising Monsanto on an application development deal in connection with an IT outsourcing transaction, and acting for Baxalta in a research development collaboration with Precision BioSciences concerning the development and commercialization of a T-cell therapy. Other clients have included Motorola, Xerox Corporation and Finnair.
Ropes & Gray LLP is instructed by telecoms companies, financial institutions and private equity groups, a recent example of which included advising TPG Capital in its stock acquisition of internet operating systems provider Wind River Systems, involving the negotiation and drafting of IP transition services, licensing and collaboration agreements. In addition, the team acted for semiconductor manufacturer M/A-Com Technology Solutions Holding in a licensing and joint venture arrangement with STMicroelectronics for the development of certain telecoms technology. The practice group is jointly headed by Jane D. Goldstein, who divides her time between New York and Boston, Edward G. Black in Boston and Silicon Valley-based Andrew N. Thomases. Also recommended are Matthew Jacobson, who joined the team from King & Spalding LLP and divides his time between San Francisco and Silicon Valley, and recently promoted partner Regina Sam Penti, who divides time between Boston and London.
Sheppard, Mullin, Richter & Hampton LLP
Sheppard, Mullin, Richter & Hampton LLP was recently strengthened by the arrival of Daniel E. Schnapp in New York, who joined the practice from Hughes Hubbard & Reed LLP and jointly heads the team alongside San Francisco-based Brian D. Anderson and San Diego-based Michael D. Orlando. In addition, Los Angeles-based Sidney S. Fohrman joined the practice group from Barnes & Thornburg LLP in March 2018. Of late, the team negotiated various agreements for Viacom in connection to the implementation of a consumer data platform, which was designed to collect, process and analyze consumer data across the Viacom media network. The firm also advised the nonprofit music company ASCAP on the drafting and negotiation of a licensing agreement with Facebook for the right to publicly perform the client’s repertory of musical work embodied in audio-visual content distributed through Facebook.