Experience
Inbound (FDI) Merger and Acquisition Purchases of U.S. Company, Creating Cross Border Equity Joint Ventures
We have represented a number of French and British technology companies with respect to inbound (FDI) merger and acquisition purchases of U.S. company, creating cross border equity joint ventures. Our years of experience and large number of these clients speeds the process and transactions.
Venture Capital Transaction
We represented the owner of cutting-edge combuster technology in the creation of a new company with client intellectual property and patents combined with private equity contribution. We leveraged our unique venture capital and intellectual property experience to streamline the transaction.
Export Control
Our firm has represented numerous technology, e-commerce, engineering and manufacturing clients in the analysis of laws, regulations and classifications to determine Export Control licenses with the U.S. Commerce Department.
OFAC/Embargoed Countries/Denied Parties Licenses and Investigations/Export Control/FCPA
Represent numerous clients in determining the legality of transactions with U.S. embargoed countries / OFAC, FCPA and on Export Controls.
Counseled our Client on Export Control Concerning Multiple Research Projects
We provided advice on export control classifications for over 100 research projects for a large company in the automotive industry. We provided guidance on export control provisions in licensing and technology transfer agreements.
Organization of Multiple Software and Technology Start Ups, Venture Capital and Private Equity
Distribution and Channel Partnering Agreements
Our firm prepared distribution and channel partner agreements for Standard Register Company's Digital Pen and Paper System. In addition, we drafted end-user license agreements (EULA) for the Digital Pen and Paper System. Utilizing a combination of strength from our corporate department and intellectual property practice group allowed for quick understanding of the technology and the unique issues that it presented.
IP Licensing/Agreement Experience
Our attorneys have drafted a wide variety of agreements for clients to help them protect their intellectual property. Since 2011, we have drafted more than 575 total agreements, which can be broken down as follows:
Development Agreements (70)
- Independent Contractor Agreements (15)
- Talent Agreements (15)
- Presenter Agreements and Content Provider Agreements (10)
- Joint Ownership Agreements (10)
- Production Agreements (10)
- Employee Invention Policy and Agreements (5)
- Joint Development Agreements (5)
Litigation-related/Dispute Agreements (55)
- Pre-Litigation Settlement Agreements (15)
- Trademark Trial & Appeal Board Settlements (15)
- Co-Existence Agreements (10)
- Litigation Settlement Agreements – Patent Disputes (5)
- Litigation Settlement Agreements – Trademark Disputes (5)
- Joint Defense Agreements (5)
License Agreements (155)
- Software License Agreements (35)
- Patent License Agreements (35)
- Trademark License Agreements (20)
- End User License Agreements (15)
- Subscription Agreements (10)
- Software as a Service (SaaS Agreements (10)
- Channel Partner Agreements (10)
- Pilot Agreements (10)
- Copyright License Agreements (5)
- OEM License Agreements (5)
IT-related Agreements (170)
- Terms of Use and Privacy Policy (35)
- Healthcare-related IT Agreements (30)
- Software IT Agreements (25)
- Hardware IT Agreements (25)
- Master Client/Service Agreements (25)
- Support and Maintenance IT Agreements (15)
- Reseller Agreements (15)
Research Agreements (55)
- Advanced Research Agreements (25)
- Materials Transfer (20)
- Cooperative Research and Development Agreements (10)
Misc. Agreements (55)
- Non-Disclosure Agreements (25)
- Participant Agreements (10)
- Exclusive Sales Representation Agreements (5)
- Termination Agreements (5)
- Domain Purchase Agreements (5)
- Domain Escrow Agreements (5)
NPE Experience
We have defended clients in challenges to their patents from a wide variety of NPEs. Several representative examples of patents we have defended are below:
- Cascades Publishing Innovation, LLC: U.S. Patent 8386484
- Data Speed Technology LLC: US Patent 5,867,686 – High speed real-time information storage system
- eTagz: US Patent 7,503,502 – Computer readable hang tag and product
- eTagz: US Patent 7,703,686 – Consumer computer-readable product label apparatus and method
- eTagz: US Patent 6,298,332 – CD-Rom product label apparatus and method
- eWatch: US Patent 6,970,183 – Multimedia surveillance and monitoring system including network configuration
- Helfrich Patent Licensing: Various US Patents related to mobile device technology
- Honeywell International, Inc.: Various US Patents related to bar code and QR code technology
- Infinite Data, LLC: US Patent 5,790,530 – Message passing multiprocessor system)
- Innovatio IP Ventures: Various US Patents related to local area network radio frequencies and multiple channel wireless access
- Lemolson Foundation: Various US Patents relating to bar code technologies
- Lodsys: US Patent 7,222,078 – Interactive applications (smartphone apps)
- Mobile Logistics: Various US Patents related to transportation yard management systems
- MPHJ (formerly Project Paperless): Various US Patents related to computer architecture and document management
- Pragmatus Telecom, LLC: US Patent 6,322,231 – Method and system for coordinating data and voice communications via customer contract channel changing system using voiceover IP)
- Round Rock: Various US Patents related to radio frequency identification
- TPQ Development LLC: US Patent 5,412,730 – Encrypted data transmission system employing means for randomly altering the encryption keys)
- US Ethernet Innovations: Various US Patents related to Ethernet connections and point of sale
- Wireless Media: Various US Patents related to transportation yard management systems
- You Technology, Inc.: Various US Patents related to biometric technology