Notable Representations, Key Contacts
Stand-Alone Technology and IP Transactions
The Technology & IP Transactions Group handles all forms of stand-alone technology and intellectual property transactions such as patent acquisitions, licensing agreements, joint ventures, strategic alliances, research and development collaborations, and internet/e-commerce arrangements, and other types of cross-border technology transactions, among others. Our lawyers handle transactions in the Fintech and Adtech sectors.
Complex strategic transactions
The Technology & IP Transactions Group works seamlessly with lawyers in Weil’s global M&A, Private Equity, Banking & Finance and Capital Markets practices in connection with technology and intellectual property-related matters that arise in these types of transactions.
Our lawyers have extensive experience in complex commercial transactions. We regularly negotiate, draft and advise clients on a broad range of commercial contracts, including:
- Master supply and sourcing agreements
- Reseller, sales representative and distribution agreements, and other marketing and channel relationships
- Joint development agreements
- IT equipment, software and hosting services procurement agreements
- Software and database development agreements
- Maintenance and support agreements
- Services agreements
- Outsourcing agreements (manufacturing, IT outsourcing; business process outsourcing; renewals, restructurings and disentanglements)
When contemplating an outsourcing transaction, it is critical to have experienced counsel to guide you through the various pitfalls that can arise. Weil’s attorneys bring valuable market experience and insight to business outsourcing. Weil has a wealth of experience in all degrees of outsourcing, ranging from limited-scope, targeted outsourcing to cross-border transactions and matters involving outsourcing all of a company’s information technology operations. We have been involved in a broad spectrum of transactions and are often called upon for sound judgment in relation to the structuring, drafting and negotiating of complex international outsourcing arrangements.
Hardly a day goes by without some sort of cybersecurity or data privacy threat making global headlines — and in these cases, there is only such a thing as bad publicity. As companies grow increasingly more reliant on technology to operate their businesses, engage with customers, and disseminate information, a data breach can expose sensitive personal and business information, disrupt mission-critical operations, ruin reputations, and attract significant regulatory scrutiny. Our Technology & IP Transactions Group can draw on its experiences to provide guidance on: protecting your company from external cyber threats or “hacktivism,” complying with statutory and regulatory requirements, and managing a crisis in the event of a breach.
Collaborating with lawyers in our IP/Media Litigation and Patent Litigation Practices, the Technology & IP Transactions practice provides services in areas such as IP portfolio management, IP audits and due diligence, trade secret protection and management, standards counseling, open source matters, and cloud computing matters, among others.
We also advise a range of clients. Our client list includes, among others:
- Adobe Systems Incorporated
- Applied Materials
- Eli Lilly and Company
- General Electric Company
Technology and IP aspects of its $800 million acquisition of Fotolia LLC, and acquisitions of Livefyre, Inc., Mixamo, Inc., Aviary, Inc., Neolane SA, Behance, Inc., and of certain assets comprising the Digital Analytix business of comScore, Inc.
- $16 billion acquisition of WhatsApp, a provider of a cross-platform mobile messaging application that allows a client to exchange messages without having to pay for SMS.
- acquisition of Parse, a provider of cloud-based software developer kits for mobile devices.
- acquisition of the Atlas Advertiser Suite, a provider of campaign management and measurement tools for marketers and agencies from Microsoft Corporation.
Technology and IP aspects of its:
- $1.3 billion acquisition of the CeraVe, AcneFree and AMBI skincare product brands from Valeant Pharmaceuticals International, Inc.
- $1.2 billion acquisition of IT Cosmetics, LLC from its founders and TSG Consumer Partners.
Technology and IP aspects of its:
- $1 billion take-private acquisition of Epiq Systems, Inc. and its combination with Document Technologies Inc.
- pending acquisition, with management, of Inmar, Inc. from ABRY Partners.
- $25 billion exchange of Merial, its animal health business, for the consumer healthcare business of Boehringer Ingelheim GmbH.
- exclusive worldwide licensing agreement with Hanmi Pharmaceutical Company Ltd. to develop and commercialize a portfolio of experimental, long-acting diabetes treatments involving up-front and milestone payments of up to €3.9 billion plus double digit royalties on net sales.
- $20.1 billion takeover of Genzyme, a listed U.S.-based biotechnology firm—in the second largest biotech deal of all time.
- $4.4 billion acquisition of AOL Inc.
- acquisitions of Sensity Systems Inc., Intel Media, EdgeCast Networks, Inc. and Terremark Worldwide Inc., and in Terremark’s subsequent acquisition of CloudSwitch.
IP aspects of Yahoo!’s string of transactions, including its:
- pending $4.83 billion sale of its operating business to Verizon Communications Inc.
- $1.1 billion acquisition of popular blogging site Tumblr.
- acquisitions of BrightRoll, Flurry, Tomfoolery, ThumbsUp Labs, Ptch, AdMovate, Mskynet, Summly, Rockmelt, Xobni, GhostBird Software, Playerscale, GoPollGo, Jybe, Snip.it, UrbanQ and Limelight Labs/OnTheAir.
Weil has advised 77% of technology companies in 2016 Fortune 100.
Weil is incredibly strong in IP transactions” and “has a dedicated group which links well with the corporate team to get deals done.”
IAM Patent 1000 2016
Ranked Band 1 for IT & Outsourcing: Transactions in California
Ranked as a Tier 1 Firm Nationwide for Patents: Portfolio Management and Licensing and Technology: Transactions by Legal 500 US
Jeffrey Osterman Named Technology “MVP”
Weil “provides excellent legal knowledge and practical advice and is solution-oriented.”
Legal 500 US 2016
Transaction Team of the Year for Media, Technology and Telecoms
Legal 500 US 2014
Named 2014 “Practice Group of the Year” for Technology by Law360
They have a sophisticated commercial understanding and a well-tuned sense of current IP trends. As a result of their deep practical experience, they find creative ways to achieve goals, and they have all the technical expertise you could ever need.
IAM Patent 1000
They provide very practical advice, are very flexible and responsive. They are guided by real-world experience and are very well respected,” and “[t]hey have the resources to bring in other areas of the firm when needed.”
Chambers USA 2016
“They don't get caught up in abstracts or unimportant details but get at the critical issues and give really good suggestions on how to negotiate through difficult situations.”
All five U.S.-based Technology & IP Transactions partners are recommended for technology transactions in IAM Patent 1000 and Chambers USA and are named “IP Stars” by Managing Intellectual Property