• Negotiated buy- and sell-side spinouts of business units or product families involving division of IP assets, cross-licenses for fields of use or retained businesses, ongoing services and manufacturing agreements and non-compete provisions
  • Managed IP issues for multiple mergers and acquisitions in the semiconductor field, including coordination of patent, licensing, IP litigation, trademark and product liability diligence and negotiating IP representation and warranties
  • Negotiated major customer-side outsourcing transactions for IT services in the health care services field and worldwide deployment of a VoIP system
  • Assisted a client in the transition from a product commercialization business model to a licensing business model involving a substantial patent portfolio, inbound patent licenses from multiple sources and the implementation of an outbound licensing strategy
  • Drafted and negotiated numerous agreements for software as a service companies, including internationalization of end user agreements in more than 20 jurisdictions and negotiation of reseller and private label agreements for complementary applications
  • Represented industry-standard-setting groups in the development of intellectual property policies and drafted membership, testing certification and licensing agreements
  • Negotiated manufacturing and development agreements for integrated circuits, semiconductor, manufacturing tools and electronic devices
  • Negotiated exclusive license and purchase option for a wireless technology spinout
  • Negotiated and structured a complex field-of-use IP license for ultra-wideband technology
  • Assisted clients in exploring various joint venture, partnership, or alliance relationships and structures
  • Performed contractual and license right assessments for dispute resolution and advised clients on procedures to minimize legal risks
  • Drafted and negotiated enterprise software licensing agreements and channel agreements
  • Negotiated an international joint development and exclusive license agreement in display technology field
  • Assisted in structuring special purpose vehicles to insulate intellectual property assets