Contact: Laurie Hane or John Delaney
Specialized skills are needed to negotiate a transaction involving the development, purchase, sale, or licensing of technology.
Expertise in both intellectual property and commercial law is required, as well as business acumen, technology savvy, and
knowledge of industry best practices. Morrison & Foerster is one of the few firms in the world that brings this expertise
to bear for clients. With more than 70 attorneys in the technology transactions group, the firm regularly negotiates and counsels
clients with respect to:
- development, manufacturing, and commercialization agreements
- intellectual property and technology acquisitions and divestments
- joint ventures and strategic alliances
- patent and technology licenses, including in adversarial contexts
- sourcing arrangements, including off-shoring and BPO
- distribution, supply, and OEM agreements
- technology procurement
- software licensing
- Internet law
- open source development and distribution
- reverse engineering projects
- intellectual property management and audits
- branding and marketing arrangements, including contests and sweepstakes
We frequently assist clients in establishing the core business terms of the deal in addition to advising on intellectual property
rights allocation, licensing terms, warranties, indemnities, damages disclaimers, limitations of liability, and the like.
We also actively assist clients in creating new business models.
We regularly work with clients in industries as diverse as hardware, software, semiconductor, biotechnology, medical devices,
telecommunications, financial services, Internet and ecommerce, entertainment, video games, and chemicals. We have particular
expertise in technology transactions involving highly regulated areas, such as financial services and health care, and in
cross-bordertransactions. Complex negotiations to resolve pending intellectual property litigation are another specialty of
the group. We also have extensive experience working with clients on related areas such as antitrust, export control, bankruptcy,
security interests, privacy, revenue recognition rules, labor, and government contracts. The practice and its partners have
been recognized by Chambers and Global Counsel as leaders in the field.
Technology transactions attorneys practice in the firm’s offices in key U.S. technology markets (such as Northern California,
Los Angeles, San Diego, Northern Virginia, and New York) as well as in London, Tokyo, Brussels, and Shanghai.
Representative Matters
Common Application, Inc., in its $10 million customized software development, license, technology escrow, data management, and related support services
agreements with AY Software Services, Inc.
Yahoo! Inc. in its negotiations and agreement with Xfire for a royalty-bearing license of a Yahoo! patent covering technology that allows
online game players to easily join games in which their friends are playing using “instant messenger” software.
Fujitsu Limited in its license covering the entire portfolio of patents of Rambus Inc. The agreement covers chip interface technology that
Fujitsu has used in PCs and servers, as well as future products for the next five years.
Troika Networks, Inc., in a $36.5 million sale of all its assets to Qlogic Corporation. Troika was a private company that designed and sold application
hosting platforms and embedded products for data storage systems. Its products were designed to enable users to improve their
management and protection of data.
Freescale Semiconductor, Inc. in the $45 million sale of its timing solutions division to and patent cross-license agreement with Integrated Circuit Systems,
Inc.
SOFTBANK in connection with Yahoo!’s $1 billion investment in SOFTBANK’s China affiliates, Alibaba and Tao Bao, including in the negotiation
of agreements under which Yahoo! provided Alibaba with exclusive rights to the Yahoo! name and search technologies in China.
Yahoo! in its agreement with Miva for a license of Yahoo! patents for Internet search. The agreement was part of a settlement
of a patent infringement lawsuit and requires Miva to pay ongoing royalties for the license.
Novell with respect to open source software issues including its dispute with SCO over copyrights in UNIX.
Fujitsu in its agreements with Sun to jointly develop and deliver future-generation Solaris and SPARC-based systems.
Chiron in its license of rights to Cubicin from Cubist Pharmaceuticals.
Bank One in its transaction with Total System Services, reportedly the largest outsourcing arrangement for credit card processing
services ever established.
Nikon in its patent cross-license agreements with ASML and Zeiss covering lithography equipment, as part of a global settlement
of pending litigation.
Hitachi in its $2.05 billion deal to combine its hard disk drive operations with those of IBM, including the negotiation of all technology
transfer aspects of the transaction, advising Hitachi with respect to strategic licensing issues, and outsourcing to IBM Global
Services the information technology needs of the acquired business.
Tanox in connection with negotiation of a three-way collaboration with Novartis and Genentech for Xolair and other anti-IgE products.
BEA with respect to intellectual property issues in strategic alliances and software licensing arrangements.
Nextel in its agreements with Qualcomm, Motorola and other companies in connection with the development, licensing, and deployment
of technology for the next generation of Nextel’s wireless telecommunications services.
The Harry Fox Agency on complex music licensing and digital rights issues.
Genelabs in the licensing of Japanese rights in its lupus therapeutic, prasterone, to Tanabe Seiyaku.
AIG Technologies in its transaction with Lehman Brothers to provide mainframe processing and disaster recovery services over a ten-year term
for over $300 million.
Hertz on privacy and Internet-related legal issues.
EchoStar in its patent license, distribution, and settlement agreements with Gemstar with respect to interactive program guide technology
to resolve all outstanding litigation between the companies.
Ask Jeeves on search technology-related legal issues.
Chartered Semiconductor in its arrangements with IBM for the development and licensing of semiconductor manufacturing technology and related foundry
activities.
Qwest in a variety of intellectual property and information technology matters, including the intellectual property and technology
aspects of Qwest’s sale of its Dex directory publishing business in a $7.05 billion leveraged buyout, Qwest’s agreements with
IBM and Hewlett-Packard for the establishment and outsourcing of Internet services facilities, and Qwest’s strategic relationship
with BellSouth.
Negotiations with the Free Software Foundation with respect to open source software license compliance.
iVillage on a range of issues involving content and technology licensing, privacy, online promotions and online advertising.
Fujitsu in the restructuring of its FASL joint venture with AMD for the development and manufacture of flash memory and EPROM chips.
Thomson Financial in a variety of outsourcing and market data services agreements, including a transaction with Merrill Lynch involving the
joint development and implementation of a new wealth management technology.
