Corporate Intellectual Property

Experience

  • Joint Ventures, Collaborations and Strategic Alliances

    • Johnson & Johnson in its acquisition of Zarbee's Naturals, a leader in naturally-based healthcare products.
    • Johnson & Johnson in its global co-development and commercialization agreement with Theravance Biopharma, relating to various compounds being developed for the treatment of inflammatory bowel disease, including Crohn's and ulcerative colitis.
    • TPG Capital and Welsh, Carson, Anderson & Stowe in the $4.1 billion acquisition of Kindred Healthcare.
    • CVC Capital Partners in its investment in Republic Finance, a consumer loan provider.
    • Time Inc. in its $2.8 billion sale to Meredith.
    • AmTrust Financial Services in a strategic transaction with Madison Dearborn for a portion of AmTrust’s U.S. fee businesses valued at $1.15 billion.
    • Resolution Life in its sale of Lincoln Benefit Life to Global Bankers Insurance Group.
    • Pacific Life and Aviation Capital Group in the minority investment by Tokyo Century in Aviation Capital Group, a transaction which won the Airline Economics Aviation 100 “2017 Overall Equity Deal of the Year” award.
    • Kuvare in its acquisition of United Life Insurance Company.
    • Paraline Group and ICAT in the sale of ICAT to the Schinnerer Group, a subsidiary of Marsh & McLennan Companies.
    • Discovery Communications in its $14.6 billion acquisition of Scripps Networks Interactive.
    • Prudential Financial in its life insurance joint venture with CT Corp in Indonesia.
    • Clayton, Dubilier & Rice in its $650 million acquisition of Capco, FIS’s management consulting business.
    • Verizon Communications in its $3.1 billion acquisition of Straight Path Communications, a leading wireless spectrum holder.
    • Citizens Financial in its acquisition of Western Reserve Partners, a merger and acquisition advisory firm.
    • Allergan in its $2.47 billion acquisition of ZELTIQ, a medical technology company focused on utilizing its proprietary CoolSculpting controlled-cooling technology platform, the sales leader in the fast-growing body contouring segment of medical aesthetics.
    • Warner Music Group in its investment in and licenses with Interlude Music, a joint venture technology company specializing in interactive music videos, to utilize its proprietary technology to jointly develop, create, produce and distribute innovative interactive music video content.
    • A global investment and technology development firm in software, patent, data and technology matters related to a joint venture with financial investors to develop financial analysis software and provide services in respect of back-end information technology systems and financial analysis software.
    • A global investment and technology development firm in trademark matters and licenses related to a joint venture with an international real estate and hotel business for constructing and branding hotels and residences in East Asia.
    • Alibaba.com in the acquisition of Yahoo! Inc.’s China business, licensing of proprietary Yahoo! technology and investment by Yahoo! in Alibaba.
    • Mitsui in its patent and trademark licenses, non-disclosure and services agreements, and joint venture with Dow Chemical to construct, own and operate a membrane chlor-alkali facility in Freeport, Texas.
    • A publisher of educational media in copyright, trademark, software and publishing matters, and tax issues related thereto, in connection with prospective cross-border joint ventures in Korea, Vietnam, Indonesia, Japan, Malaysia and Mexico.
    • LG Electronics in the establishment of a strategic alliance and co-branding relationship with Viking Range Corporation, including distribution of LG-brand home appliances through Viking distributors in the United States and expanding Viking’s international distribution.
    • American International Group in trademark, co-branding and social media matters and licenses related to its joint venture agreement with PICC Life Insurance Company Limited and its $500 million investment in People’s Insurance Company (Group) of China to form an agency distribution company in China for jointly developed life and retirement insurance products and certain existing insurance products.
    • Ambev S.A. in its $1.24 billion acquisition of indirect control of Cerveceria Nacional Dominicana (CND) and its strategic alliance with E. León Jimenes to create the leading brewer in the Caribbean.
    • A well-known life style brand in its formation of a joint venture to exploit the brand in Asia.
    • A health care research organization in its collaboration and funding agreements with hospitals, universities and global partners.
    • An individual in a joint venture with a leading UK-based restaurant group to expand the group globally through assignment and licensing of intellectual property.
  • Licensing

    • An Asian insurance company in its agreement to develop and license software and mobile applications to one of the world’s largest international banks in connection with a strategic alliance for insurance and financial products.
    • One of the world’s largest stock exchanges in negotiating technology development agreements with another exchange and in its separate acquisition and customization of trading software.
    • One of the largest UK-based software vendors in licensing its software to financial institutions worldwide.
    • A U.S. foreign policy and international affairs think tank in intellectual property, software and mobile application licenses, publishing agreements, and data services agreements with multiple publishers and technology service providers.
    • A U.S. management consulting firm in its branding agreement and LLC agreement with its IP special purpose entity and a divested entity licensee, and trademark and social media issues arising from a change of control of one of its licensees.
    • A multinational real estate management firm in licensing trademarks and information technology relating to the operation of a prominent resort property.
    • Westfield in negotiating a license to use the World Trade Center name, marks and logos in connection with its operation of the World Trade Center retail facilities.
    • An International Sports Federation in its trademark license and settlement agreement concerning rights in the name of its World Championship events.
    • A luxury spa and hair salon in its trademark license and management agreements with a cosmetics and fragrance company.
    • Galderma Pharma in its agreement with NovaBay Pharmaceuticals to develop and commercialize NovaBay's novel Aganocide drugs for major dermatological conditions.
    • Gen-Probe in its collaboration agreement with Pacific Biosciences of California in the research and development of third-generation DNA testing systems for use in disease diagnosis and blood screening.
    • A health care start-up in licensing patents, materials and technology from a cancer research and treatment center for the development of innovative treatments for cancer and other diseases.
    • Galderma Pharma in its licensing arrangement with ZARS Pharma relating to the promotion and distribution of a topical anesthetic cream, Pliaglis, in North America and in the subsequent extension of that agreement to cover worldwide rights.
  • IP/IT-Related Agreements

    • A major sports league in drafting and negotiating sponsorship agreements to monetize its market-leading brand.
    • Harvard University in a commercial agreement to support the digitization and public availability of the federal and state case reports in the Harvard Law School library.
    • Oriental Trading Company in its agreement with Internet domain registrars and hosting companies for the management of certain of ICANN’s new gTLD domains.
    • Footprint Power in its supply, development, and services agreements in connection with the sale of Salem Harbor Energy Station Project to Highstar Fund IV and Toyota Tsusho, an EPC Contract with Iberdrola Energy Projects, to build a 700MW state-of-the-art combined-cycle gas electric generating facility and a $730 million construction financing, including documentation covering the IP rights to operate the facility.
    • A Brazilian metallurgy company in its joint research and development agreements and other commercial contracts.
    • Advice to an entrepreneur in drafting and negotiating an IP license and LLC agreement for the development and initial commercialization of a form of low cost renewable energy technology.
    • A non-profit, interdisciplinary arts organization that provides artists working in new media, literary and performing arts with exhibition and performance opportunities in the sale of a portion of its archives to a museum and research facility.
    • A leading professional services firm in the procurement and licensing of communications, information technology systems and software.
    • Conifer Financial Services in the drafting and negotiating of relevant technology services agreements with third party vendors in advance of the sale of a majority stake in the firm to The Carlyle Group.
  • M&A, Divestitures, IPOs, Bond Offerings, Restructurings, and Financings

    • Wilsonart, a Clayton, Dubilier & Rice portfolio company, in the $150 million sale of its Asia Business to Aica Kogyo and the Development Bank of Japan.
    • DoubleVerify in its acquisition of Ad-Juster, a market-leading SaaS provider of unified data reporting and analytics for digital advertising.
    • Clayton, Dubilier & Rice in its $3.8 billion take private acquisition of Anixter International, a NYSE-listed company.
    • Kelso & Company in its acquisition of a majority equity interest in Individual FoodService from Sole Source Capital.
    • Reynolds Group and Closure Systems International (CSI) in their sale of CSI businesses and facilities to Cerberus Capital Management.
    • Clayton, Dubilier & Rice and BrandSafway in Brookfield’s $1.3 billion investment in BrandSafway.
    • Chubb in the acquisition of Banchile Seguros de Vida and Segchile Seguros Generales from a subsidiary of Quiñenco S.A. and other minority investors.
    • Prudential Financial in its $2.35 billion acquisition of Assurance IQ.
    • Amazon as strategic partner to Yankee Global Enterprises in the acquisition of the YES Network from The Walt Disney Company at a total enterprise value of $3.47 billion.
    • Pacific Life in its sale of Aviation Capital Group to Tokyo Century Corporation.
    • Pernod Ricard in its $223 million acquisition of Castle Brands.
    • Centerbridge Partners in its investment in GoHealth.
    • Syncora Holdings in its $429 million sale of Syncora Guarantee, a wholly owned subsidiary, to Star Insurance Holdings, an entity organized by GoldenTree Asset Management LP.
    • AFP Habitat in its acquisition of Colfondos from Scotiabank and Mercantil Colpatria.
    • OEConnection (OEC) and Providence Equity in the sale of a majority stake in OEC to Genstar Capital.
    • RL LP in its sale of Lincoln Benefit Life to an affiliate of Kuvare US Holdings.
    • Bain Capital Private Equity and Diamond Castle in the sale of Beacon Health Options to Anthem.
    • Elliott Management in its $683 million acquisition of Barnes & Noble, the largest retail bookseller in the U.S.
    • Manna Pro, a manufacturer and marketer of pet care and nutrition products and a Morgan Stanley Capital Partners portfolio company, in its acquisition of Hero Pet Brands.
    • American Express in its acquisition of Resy, a leading digital restaurant reservation booking and management platform.
    • SouthernCarlson in its sale to Kyocera Corporation.
    • Toyota Motor Corporation in its joint investment, with DENSO Corporation and SoftBank Vision Fund, in Uber’s Advanced Technologies Group.
    • AmTrust Financial Services in the sale of its domestic and international surety and credit reinsurance operations to Liberty Mutual.
    • GoDaddy in its acquisition of Sellbrite, a multi-channel management platform.
    • Principal Financial Group in its $1.2 billion acquisition of Wells Fargo & Company’s Institutional Retirement & Trust business.
    • Sirius Computer Solutions, a leading IT solutions integrator, and its majority owner, Kelso & Company, in the sale of a majority equity interest in Sirius to Clayton, Dubilier & Rice.
    • Hamilton Insurance Group in its acquisition of Pembroke Managing Agency and Ironshore Europe DAC from Liberty Mutual.
    • NCI Building Systems in its unit purchase agreement with Environmental Materials, LLC.
    • Atlas Merchant Capital in its investment in Ascensus, the largest independent recordkeeping services provider, third-party administrator, and government savings facilitator in the United States.
    • KeyBank in its acquisition of Laurel Road’s affinity-focused digital lending business.
    • Hojeij Branded Foods in its $330 million sale to Lagardère Travel Retail.
    • Quarton International in its sale to Cowen.
    • Resolution Life in its revised AUS$3.0 billion acquisition of AMP Life.
    • Dealer Tire in a significant investment by Bain Capital Private Equity.
    • Providence Service Corporation and LogistiCare in LogistiCare’s acquisition of Circulation, a provider of technology-enabled logistics solutions and analytics for managing non-emergency transportation across healthcare.
    • Clayton, Dubilier & Rice in its joint investment with Cardinal Health in naviHealth, the largest manager of post-acute benefits for health plans and a leading value-based care partner to health systems and providers.
    • Dealer Tire in its significant investment in SimpleTire.
    • Solenis, a Clayton, Dubilier & Rice portfolio company, in its combination with BASF's paper and water chemicals business.
    • Pitney Bowes in the sale of its global production mail business to Platinum Equity.
    • SunSource, a Clayton, Dubilier & Rice portfolio company, in its acquisition of Ryan Herco Flow Solutions, a distributor of hydraulic and pneumatic fluid power products in the U.S. and Canada.
    • Cerberus Capital Management in its acquisition of Electrical Components International, the world’s leading manufacturer of wire harnesses, control boxes and value-added assembly services, from KPS Capital Partners.
    • TPG Capital and Welsh, Carson, Anderson & Stowe, with Humana, in their $1.4 billion acquisition of Curo Health Services.
    • Morgan Stanley Private Equity in its acquisition of Manna Pro, a leading producer of nutritional supplements and other animal products, from The Carlyle Group.
    • The Carlyle Group in its strategic minority investment in DiscoverOrg, the leading global sales and marketing intelligence platform.
    • Clayton, Dubilier & Rice in its acquisition of a majority interest in American Greetings.
    • Allergan in its $2.9 billion acquisition of LifeCell Corporation, a regenerative medicine business.
    • Verizon Communications in IP, IT, privacy and data protection matters in connection with its $1.8 billion acquisition of XO Communications’ fiber-optic network business.
    • Kelso & Company in its acquisition of Risk Strategies Company, a national insurance and benefits brokerage and risk management firm, from Kohlberg & Company.
    • One of the world’s largest technology and e-commerce companies in its acquisition of an international semiconductor chip design company.
    • Verizon Communications in its pre-closing IP restructuring, IP licensing arrangements and certain technology matters in connection with the $10.54 billion sale of its local wireline operations in California, Florida and Texas to Frontier Communications.
    • Verizon Communications in IP, IT and privacy matters in connection with its $612 million acquisition of Hughes Telematics.
    • Tribune Company in its IP licenses and renegotiation of commercial technology arrangements in connection with its acquisition of Gracenote, the global leader in music technology and metadata, from Sony Corporation of America.
    • Tribune Media Company in its spin-off of Tribune Publishing Company, including drafting and negotiating of licenses and other agreements covering the post-separation use of IP.
    • A publisher of educational media in its sale of IP rights to certain English language learning educational products in China, Hong Kong, Macau, Taiwan and India and its pre-closing restructuring and reorganization to retain IP rights to dozens of non-Western territories.
    • The Carlyle Group in its $3.3 billion acquisition of Getty Images.
    • Viewdle, a facial recognition technology provider, in its sale to Motorola Mobility, a division of Google.
    • LivingSocial in its acquisition of Ticket Monster, the leading social commerce website in South Korea.
    • Hasbro in its reacquisition of video game rights from Infogrames Entertainment and related licensing of Dungeons and Dragons, Monopoly and certain other properties.
    • Schneider Electric in IP, IT and privacy matters in its acquisition of Summit Energy Services, a leader in outsourced energy procurement and sustainability services to industrial, commercial and institutional enterprises.
    • Schneider Electric in IP and software development matters in connection with its $2 billion acquisition of Telvent GIT SA, a software and solutions provider to the electricity, water, transportation and oil and gas industries.
    • Gogo, the world’s leading provider of in-flight connectivity, in its $187 million initial public offering of common stock.
    • Nestlé in its $1.4 billion acquisition of the aesthetic dermatology business of Valeant Pharmaceuticals.
    • Johnson & Johnson in IP matters in connection with the sale of its worldwide intimate health business to Reckitt Benckiser, a UK-based consumer goods company.
    • Clayton, Dubilier & Rice in IP matters in connection with both its acquisition and sale of PharMEDium, a provider of sterile compounding services to hospital pharmacies.
    • Actavis in the sale of its branded respiratory business in the U.S. and Canada to AstraZeneca for $600 million, and an additional payment of $100 million in connection with certain other agreements.
    • Actavis in its acquisition of Nasdaq-listed Durata Therapeutics, a pharmaceutical company focused on the development and commercialization of therapeutics for patients with infectious diseases and acute illnesses, for $675 million plus contingent value rights.
    • Pernod Ricard in its €5.6 billion acquisition of the Vin & Sprit Group, makers of Absolut vodka, from the Kingdom of Sweden in one of the largest cross-border privatizations of 2008.
    • Guardian Life in the sale of its eMoney online financial advisory business to Fidelity.
    • International Paper on the treatment of IP assets in the negotiation of a $1.4 billion ABL Credit Facility entered into in connection with the combination of its xpedx distribution solutions business with Unisource Worldwide in a “Reverse Morris Trust” transaction to form Veritiv Corporation.
    • Standard General in its acquisition of RadioShack’s assets based credit facility from GE Capital in a transaction expected to result in ownership of not less than 50% of the company’s equity securities and including the allocation of intellectual property rights among various stakeholders through assignments and licenses.
  • Privacy, Data Protection and Cybersecurity

    • A major processor of personal financial data on privacy issues in acquiring other aggregators of personal data.
    • A financial services company in developing privacy related documentation.
    • An industry-leading media and entertainment company on recent developments in privacy law and revising its forms of Privacy Policy and website Terms of Use to be used across its family of companies worldwide.
    • A major television content company to ensure that privacy policy is consistent with U.S. law and its terms of use are enforceable.
    • An early stage growth equity investment company in its non-disclosure agreement with a well-known family office and the implementation of IT security policies and procedures at the family office and its vendors.
    • A private equity firm in assessing potential risks from data and network security breaches at a healthcare company and the availability of insurance coverage in connection therewith.
  • Counseling

    • Among the world’s leading providers of cloud-based processing and data storage services in drafting, and advising on liability issues, with respect to its standard terms of use.
    • A leading consumer electronics and computer firm in drafting its end user license agreements for software.
    • An alcohol beverage company in intellectual property and trade secret protection matters relating to its agreements with a manufacturer.
    • Private equity firms in negotiating vendor agreements to acquire information technology, software and consulting services.
    • A professional and amateur theatre licensing company in advice on copyright and other entertainment matters related to Broadway musical scripts and scores.
    • A leading developer, publisher and marketer of interactive entertainment on trademark, merchandising, advertising and marketing issues as well as royalty sharing arrangements between partners and developers in connection with the development of an entertainment-branded clothing line.
    • An arts organization in securing rights to copyrighted works, releases from participants in publicly performed works and negotiations with government agencies for use of public space for art exhibitions and performances.
    • A telecommunications and media company based in Japan in its release of an online video sharing service in the U.S.
    • Advice to a leading foreign law firm, on behalf of a foreign government on U.S. cases and other recent developments with respect to how products manufactured outside the U.S. in violation of non-US IP laws can be blocked from importation or sale within the U.S.