Technology & IP Transactions
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.
Commercial 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)
Outsourcing
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.
Cybersecurity
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.
IP Counseling
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.
Representative Clients
We also advise a range of clients. Our client list includes, among others:
- Array Biopharma, Inc.
- Atos S.E.
- Eli Lilly and Company
- General Electric Company
- GLOBALFOUNDRIES Inc.
- Infinite Electronics, Inc.
- Intel
- L’Oreal
- OMERS Private Equity
- Panasonic
- Pirelli
- Providence Equity Partners and Providence Strategic Growth Partners
- Quest Diagnostics Incorporated
- Sanofi
- Scripps Networks Interactive Inc.
- TA Associates
- Velocity Technology Solutions, Inc.
- Verizon
- Vonage Holdings Corp.
- Yahoo!
Selected Representations
Atos S.E.
Technology and IP aspects of its:
- $3.57 billion acquisition of Syntel, Inc.
- $1.1 billion acquisition of the information technology outsourcing business of Xerox Corporation.
DIRECTV
Eli Lilly and Company
Technology and IP aspects of its:
- pending approximately $8 billion acquisition of Loxo Oncology, Inc.
- acquisition of CoLucid Pharmaceuticals, Inc.
- global licensing and research collaboration with, and equity investment in, Dicerna Pharmaceuticals, Inc.
General Electric Company
Technology and IP aspects of its:
- $3.4 billion sale of GE Water to SUEZ Environnement SA.
- $2.6 billion sale of GE Industrial Solutions.
GLOBALFOUNDRIES Inc.
Intel Corporation
L’Oréal USA
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.
OMERS Private Equity
Technology and IP aspects of its:
- $1 billion take-private acquisition of Epiq Systems, Inc. and its combination with Document Technologies Inc.
- acquisition of Inmar, Inc. from ABRY Partners.
Providence Strategic Growth Partners
Sanofi
- $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 acquisition of Genzyme Corporation.
- $11.6 billion acquisition of Bioverativ Inc.
- $4.8 billion acquisition of Ablynx NV.
Scripps Networks Interactive Inc.
Straight Path Communications Inc.
TCV
Verizon
- $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.
Vonage
Yahoo! Inc.
Over 50 of Yahoo’s M&A deals and strategic technology and intellectual property arrangements during the past 7 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.
Key Contacts
See list of lawyers globally
Shortcut Links
Ranked as a Tier 1 Firm Nationwide for Patents: Licensing and Technology: Transactions
Legal 500 US 2018
Ranked Band 1 for IT & Outsourcing: Transactions in California
Chambers USA 2018
Weil has advised 83% of the technology companies headquartered in the Bay Area and approximately 50% of the companies overall on the 2017 Fortune 100 list.
Charan Sandhu Named Among Notable Women in Law
Crain’s New York Business 2019
Karen Ballack Named Top IP Strategist
IAM Strategy 300 2017
Jeffrey Osterman Named Technology “MVP”
Law360 2016
Awards and Recognition, Speaking Engagements, Latest Thinking, Firm News & Announcements
Awards and Recognition
- Weil Ranked Tier 1 for Technology: Transactions Award Brief — Legal 500 US 2018
- Weil Ranked Band 1 for IT & Outsourcing: California Award Brief — Chambers USA 2018
- Weil "Highly Recommended" for Transactions in New York Award Brief — IAM Patent 1000 - The World's Leading Patent Practitioners 2018
- Weil Named a "Leading" Law Firm for Patents: Licensing Award Brief — Legal 500 US 2018
- Weil Named a “Leading” Firm for Telecoms and Broadcast: Transactional Award Brief — Legal 500 US 2018
- Weil "Recommended" for Transactions in California Award Brief — IAM Patent 1000 - The Worlds Leading Patent Practitioners 2018
Speaking Engagements
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IP Issues in Business Transactions 2019
Speaker(s):
Karen N. Ballack
February 07, 2019 — San Francisco, CA — Karen Ballack, co-chair of PLI’s IP Issues in Business Transaction’s program in San Francisco, will speak on two panels entitled “New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets” and “Designing, Creating, and Pruning an IP Portfolio.”
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PLI’s Understanding the Intellectual Property License 2018
Speaker(s):
Jeffrey D. Osterman
November 05, 2018 — New York, New York — Weil partner Jeffrey Osterman presents on “Software Licensing and Open Source Licenses,” as part of PLI’s Understanding the Intellectual Property License 2018. The panel discusses source code versus object code licenses; representations, warranties, indemnities and audit rights; key open source licensing concepts and terms; and license and open source compliance strategies.
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Weil’s Cybersecurity Briefings: New Challenges in Global Investigations and Litigation under the GDPR
Speaker(s):
Barry Fishley,
Randi W. Singer,
Britta Grauke and
Adam Safwat
June 20, 2018 — Following the implementation of the EU’s Global Data Protection Regulation (GDPR), multi-national organizations need to be prepared to address the challenges involved in accessing, processing and transferring data in the EU to the United States to comply with US judicial and regulatory information requests. In this webinar, experts from Weil’s Data Privacy and White Collar practices will discuss strategies for navigating these issues under the GDPR. If you would like to view a recording of this webinar, please contact WeilWebinars@Weil.com.
Latest Thinking
- Christopher Cox, Kyle Krpata and Edric Itchon Publish “Trade Secret Tips for Strategic Buyers” Publication — By Christopher J. Cox, Kyle C. Krpata and Edric C. Itchon — October 03, 2018
- Impact of the GDPR on the M&A Transaction Process Alert — Cyber Security and M&A — By Barry Fishley — PDF — January 25, 2018
- Keys for Success in Shaping M&A Deals for AI Companies Publication — The Recorder — By Craig W. Adas and Alex Purtill — August 22, 2017
- Patent Exhaustion: Contractual Limitation and Foreign Sales Alert — Technology & IP Transactions — By Daniel R. Cohl, Charan J. Sandhu and Jeffrey D. Osterman — PDF — June 14, 2017
- What to Expect When You're Investing: Managing Risk in the Technology Market Publication — Weil’s Reflections & Expectations 2014|15 — By Karen N. Ballack and Jeffrey D. Osterman — April 29, 2015
Firm News & Announcements
- Weil Advises Nexeo Solutions in its $640M Sale of Nexeo Solutions Plastics Firm Announcement — February 14, 2019
- Weil Advised athenahealth in its $5.7B Sale to Veritas Capital and Evergreen Coast Capital Deal Brief — February 02, 2019
- Weil Advises Aimbridge Hospitality in its Sale to Advent International Deal Brief — January 07, 2019