G R O U P   S T A T S

  • 31 members
  • We have experience structuring a wide range of IP-related deals, from technology transfer agreements, to joint ventures, to software (including open source) licenses, to distributorship/reseller agreements (domestic and international), to manufacturing and supply agreements for proprietary products

Our licensing and transactions attorneys have experience on both sides of the table, founded on knowledge in business relationships, practices, and trends in our clients’ market sectors, as well as up-to-date expertise in the relevant law. We understand the strengths and weaknesses of the parties’ intellectual property and how that should enter into the picture, and then we provide our clients with terms that will result in a workable relationship.

Client testimonial:
"When it comes to business strategy or in regards to a deal we may have with a licensee, I go to them for advice, and it’s been a good experience.”

Because we are focused solely on IP, our deep technical expertise allows us to analyze the market forces at play and competitors’ technologies in ways most other firms simply cannot do. We are able to project the ways a technology, industry and client’s business are likely to develop, which means we can advise ways to anticipate potential opportunities or problems. Sometimes, we are able to suggest other profitable applications for a client’s technology.

Client testimonial:
"In the acquisition conversations, we like to use them in financial transactions for the representations and disclosures. The clarity of thinking and expression of that thinking is very important."

We are known for our ability to identify, evaluate, and structure the right deal in the first place as well as for our skill in preparing and negotiating successful agreements. This might involve advising on timing of and financial terms in deals, brand protection strategies, antitrust concerns, or implications of the transactions on related company activities. We are known for being thorough, prepared negotiators who are responsive 24/7 while a deal is on-going.

Client testimonial:
"On licensing deals, they have exceeded our expectations by making themselves available to us around the clock if necessary."
  • For a technology start-up, negotiated IP provisions in their acquisition by a global consumer electronics company.
  • In a coincidental one month period, we purchased domain names in the aggregate of more than $800,000 for several different clients.
  • For a multi-national company, conducted IP due-diligence of a company with software assets that expanded our client’s service offering.
  • For a consumer products company, we established a license agreement for the sale of branded, virtual goods in an online setting which had to comport with the client’s real world relationship with existing distributors of its physical goods.

Representative clients:

  • Aavid Thermalloy, LLC – manufacturer of thermal management solutions for electronics industry
  • Amphenol TCS - designer and manufacturer of high-speed, high-density connection systems for the networking, communications, storage, and computer server markets
  • Burton Snowboards - developer of products and apparel for snowboarding and the snowboard lifestyle
  • Davol Inc. - medical device company focused on soft tissue reconstruction, including products for hernia repair, specialized surgical procedures, fixation and biologic implants (subsidiary of C.R. Bard, Inc.)
  • Earth Brands Footwear - designer and developer of health and wellness-oriented footwear
  • Euro-Pro Operating, LLC – manufacturer of household cleaning devices and small household appliances and creator of brands Shark® & Ninja®
  • Husky Injection Molding Systems, Ltd. – producer of injection molding equipment and services for the plastics industry
  • Shire Pharmaceuticals - biopharmaceutical company focused on developing and marketing specialty medicines to meet significant unmet patient needs
  • Tootsie Roll Industries, Inc. - confectionery manufacturer whose products include Tootsie Rolls and Tootsie Pops

Recent Articles:

September 19, 2014
"'Let's Take a #Selfie,' Said the Monkey: A Case of Questionable Copyrights"
How do we define “ownership” when pieces of content — especially images — are continuously created and uploaded into the public domain in a matter of seconds? Read more

September 17, 2014
"Never underestimate the power of a post-grant proceeding" by Hunter Keeton
In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Read more

July 16, 2014
"Aereo: Car Dealership or Copy Shop?" 
This article looks at Aereo’s path to the Supreme Court and its impact on new technologies such as cloud computing. Read more

May 2014
"The America Invents Act: one year on" by Patrick R. H. Waller PhD and Daniel W. Young PhD
This anniversary provides an opportunity to reflect on the significance of the changes and their impact on the US patent system. Read more

March 2014
"Responding to Accusations of Patent Infringement" by Gerald B. Hrycyszyn and Edmund J. Walsh
Here we provide a framework to conduct a review and decide how to respond—or not respond—to such threats. Read more

March 2014
"
CRISPR/Cas-9: An Exciting Addition to Genomic Editing"
by Patricia Granahan and Chelsea A. Loughran
This article provides an in-depth review of (1) the science behind this new technology, (2) several of the research groups responsible for the promising applications for this technology, and (3) the related and evolving intellectual property (IP) landscape. Read more

February 2014
"What Sochi Can Teach About Trademarks"
This article looks at five lessons businesses can learn about trademarks from the 2014 Winter Olympics. Read more

To view older publications, go to Publications


G R O U P   S T A T S

  • 31 members
  • We have experience structuring a wide range of IP-related deals, from technology transfer agreements, to joint ventures, to software (including open source) licenses, to distributorship/reseller agreements (domestic and international), to manufacturing and supply agreements for proprietary products

Our licensing and transactions attorneys have experience on both sides of the table, founded on knowledge in business relationships, practices, and trends in our clients’ market sectors, as well as up-to-date expertise in the relevant law. We understand the strengths and weaknesses of the parties’ intellectual property and how that should enter into the picture, and then we provide our clients with terms that will result in a workable relationship.

Client testimonial:
"When it comes to business strategy or in regards to a deal we may have with a licensee, I go to them for advice, and it’s been a good experience.”

Because we are focused solely on IP, our deep technical expertise allows us to analyze the market forces at play and competitors’ technologies in ways most other firms simply cannot do. We are able to project the ways a technology, industry and client’s business are likely to develop, which means we can advise ways to anticipate potential opportunities or problems. Sometimes, we are able to suggest other profitable applications for a client’s technology.

Client testimonial:
"In the acquisition conversations, we like to use them in financial transactions for the representations and disclosures. The clarity of thinking and expression of that thinking is very important."

We are known for our ability to identify, evaluate, and structure the right deal in the first place as well as for our skill in preparing and negotiating successful agreements. This might involve advising on timing of and financial terms in deals, brand protection strategies, antitrust concerns, or implications of the transactions on related company activities. We are known for being thorough, prepared negotiators who are responsive 24/7 while a deal is on-going.

Client testimonial:
"On licensing deals, they have exceeded our expectations by making themselves available to us around the clock if necessary."
  • For a technology start-up, negotiated IP provisions in their acquisition by a global consumer electronics company.
  • In a coincidental one month period, we purchased domain names in the aggregate of more than $800,000 for several different clients.
  • For a multi-national company, conducted IP due-diligence of a company with software assets that expanded our client’s service offering.
  • For a consumer products company, we established a license agreement for the sale of branded, virtual goods in an online setting which had to comport with the client’s real world relationship with existing distributors of its physical goods.

Representative clients:

  • Aavid Thermalloy, LLC – manufacturer of thermal management solutions for electronics industry
  • Amphenol TCS - designer and manufacturer of high-speed, high-density connection systems for the networking, communications, storage, and computer server markets
  • Burton Snowboards - developer of products and apparel for snowboarding and the snowboard lifestyle
  • Davol Inc. - medical device company focused on soft tissue reconstruction, including products for hernia repair, specialized surgical procedures, fixation and biologic implants (subsidiary of C.R. Bard, Inc.)
  • Earth Brands Footwear - designer and developer of health and wellness-oriented footwear
  • Euro-Pro Operating, LLC – manufacturer of household cleaning devices and small household appliances and creator of brands Shark® & Ninja®
  • Husky Injection Molding Systems, Ltd. – producer of injection molding equipment and services for the plastics industry
  • Shire Pharmaceuticals - biopharmaceutical company focused on developing and marketing specialty medicines to meet significant unmet patient needs
  • Tootsie Roll Industries, Inc. - confectionery manufacturer whose products include Tootsie Rolls and Tootsie Pops

Recent Articles:

September 19, 2014
"'Let's Take a #Selfie,' Said the Monkey: A Case of Questionable Copyrights"
How do we define “ownership” when pieces of content — especially images — are continuously created and uploaded into the public domain in a matter of seconds? Read more

September 17, 2014
"Never underestimate the power of a post-grant proceeding" by Hunter Keeton
In ePlus, Inc. v. Lawson Software, Inc., the Federal Circuit extended the logic from three earlier cases which had found that a patent determined to be valid and infringed can still be invalidated by a later PTO reexamination. Read more

July 16, 2014
"Aereo: Car Dealership or Copy Shop?" 
This article looks at Aereo’s path to the Supreme Court and its impact on new technologies such as cloud computing. Read more

May 2014
"The America Invents Act: one year on" by Patrick R. H. Waller PhD and Daniel W. Young PhD
This anniversary provides an opportunity to reflect on the significance of the changes and their impact on the US patent system. Read more

March 2014
"Responding to Accusations of Patent Infringement" by Gerald B. Hrycyszyn and Edmund J. Walsh
Here we provide a framework to conduct a review and decide how to respond—or not respond—to such threats. Read more

March 2014
"
CRISPR/Cas-9: An Exciting Addition to Genomic Editing"
by Patricia Granahan and Chelsea A. Loughran
This article provides an in-depth review of (1) the science behind this new technology, (2) several of the research groups responsible for the promising applications for this technology, and (3) the related and evolving intellectual property (IP) landscape. Read more

February 2014
"What Sochi Can Teach About Trademarks"
This article looks at five lessons businesses can learn about trademarks from the 2014 Winter Olympics. Read more

To view older publications, go to Publications