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, 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:
- Array Biopharma, Inc.
- Eli Lilly and Company
- General Electric Company
- GLOBALFOUNDRIES Inc.
- HNA Group
- The McGraw-Hill Companies, Inc. (n/k/a S&P Global Inc.)
- OMERS Private Equity
- Providence Equity Partners and Providence Strategic Growth Partners
- TA Associates
Technology and IP aspects of its:
- $1.3 billion acquisition of the CeraVe, AcneFree and AMBI skincare product brands from Valeant Pharmaceuticals International, Inc. (n/k/a Bausch Health Companies).
- $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.
Over 50 of Yahoo’s M&A deals and strategic technology and intellectual property arrangements during the past 5½ years, including:
- its highly publicized reverse spin-off of its operating business, auction sale of that business, and sale of that business to Verizon Communications Inc. for approximately $4.48 billion;
- Yahoo’s transfer of approximately 4,000 patent assets to a new Yahoo subsidiary, Excalibur, for monetization purposes;
- the technology and intellectual property aspects of over 30 of its M&A deals, including its acquisitions of Tumblr, BrightRoll, Cooliris, Flurry, Tomfoolery and ThumbsUp Labs/Aviate;
- its technology partnership with Carnegie Mellon University, and other technology collaborations with Microsoft and AOL; and
- several strategic patent sale and license arrangements with various high-profile technology companies.
Tier 1 Firm Nationwide for Technology: Transactions
Legal 500 US 2018
Weil has advised 77% of technology companies in 2016 Fortune 100.
Ranked Band 1 for IT & Outsourcing: Transactions in California
Chambers USA 2018
Ranked as a Tier 1 Firm Nationwide for Patents: Licensing and Technology: Transactions
Legal 500 US 2018
Karen Ballack Named Top IP Strategist
IAM Strategy 300 2017
Jeffrey Osterman Named Technology “MVP”