IP Counseling and Due Diligence

IP strategies must serve business objectives. We work with each client to shape an IP strategy and to develop a portfolio of IP assets that supports the company’s research, development, licensing, and marketing goals. Orrick also represents companies in a wide variety of technology transactions, including agreements to develop, license, test, market, distribute, co-brand, protect, and acquire or divest technology and related intellectual property rights.

Our lawyers have significant experience representing licensors, licensees, developers, investors, sellers and purchasers of new and existing technology, vendors and buyers of content, and both large and emerging technology companies. Representing a wide variety of clients in a variety of industries enables us to understand all aspects of technology and intellectual property transactions, including the different goals and viewpoints of all parties to a transaction.

Our broad experience helps us to quickly understand our clients’ business objectives and to focus on the key issues to be resolved. Many of these transactions also involve a strategic investment component. Orrick also has substantial experience in representing strategic investors. Combined with our intellectual property and technology experience, Orrick can provide real value to clients in these transactions.

Orrick also regularly represents both buyers and sellers on IP aspects of mergers and acquisitions. Orrick performs due diligence, reviews the relevant agreements, and represents clients in negotiating IP terms in these transactions. Our substantial experience across numerous industries and disciplines enables us to obtain excellent results for our clients.

Selected engagements for IP counseling and technology transactions include:

• Acer Incorporated. Orrick represents Acer Incorporated and its affiliated entities in a variety of matters relating to their design and manufacture of notebook computers and color display monitors. These actions are currently proceeding in a variety of locations and forums, including the Central District of California and the Eastern District of Arizona. Orrick also provides Acer Incorporated with strategic intellectual property counseling which includes patent portfolio analysis and licensing.
• AgileTV Corporation. An Orrick lawyer conducted a due diligence review for this company developing a product that will forever change the way people watch television.
• Alloptic Corporation. An Orrick lawyer conducted comprehensive IP due diligence in connection with a strategic investment by Scientific Atlanta in Alloptic.
• American Express Corporation. Orrick lawyers conducted comprehensive IP diligence, and license negotiation, in connection with a strategic investment in Ketera Corporation.
• Anacom. Orrick provided a due diligence review for this medical device company.
• Anchor Pad Corporation. Orrick conducted a due diligence review for Anchor Pad.
• Applied Materials. Drafting and negotiating an Outsourcing Agreement under which client obtains access to best of breed third-party enterprise software hosted by another company on a password protected extranet basis, including related agreements dealing with service level, equipment procurement, maintenance, training and support.
• Avrio Technologies Inc. Orrick provides IP counseling and due diligence for this optical components manufacturer for communication networks.
• BBC Technology. Orrick represented BBC Technology in a major transaction involving software and hardware licensing with ESPN, Inc. in which ESPN licensed parts of BBC Technology’s Colledia product which supports High Definition digital technology and will allow ESPN to migrate its sports programming to HD television standards.
• BeComm Corporation. Orrick represented BeComm in a Software Development and License Agreement with Intel Corporation.
• Boehringer Ingelheim Corporation. Orrick provided Boehringer with pre-acquisition due diligence as well as IP counseling regarding patent portfolio licensing.
• Boston Scientific Corporation. Orrick provides due diligence reviews for this medical products company.
• BrightStar Information Technology Group, Inc. An Orrick lawyer achieved a successful resolution in a mediation of a dispute regarding an asset purchase agreement for this information technology services company.
• Cadence Design Systems, Inc. Orrick provides due diligence, counseling, negotiation and agreement drafting relating to acquisition and licensing of critical next generation electronic design automation hardware and software tools. All aspects of intellectual property were acquired in these transactions, including patents, copyrights, trade secrets and know how.
• Compal Electronics. Orrick represents Compal Electronics in a variety of matters relating to their design and manufacture of notebook computers and color display monitors. These actions are currently proceeding in a variety of locations and forums, including the Northern District of California and the District of New Jersey. Orrick also provides Compal Electronics with strategic intellectual property counseling which includes patent portfolio analysis and licensing.
• Cardio Thoracic Systems. Orrick lawyers conducted due diligence reviews for this medical device company.
• Corixa Corporation. Orrick represented Corixa in a License, Development and Commercialization Agreement with Kirin Brewery Company, Ltd.
• CyTech Fiber Processing Systems, Inc. Orrick provided a due diligence review for this company that manufactures cyclonic dryers and related systems.
• Digital Lightwave, Inc. Orrick has provided pre-acquisition diligence on their entire IP portfolio, with emphasis on patents being acquired.
• Dover Technologies. An Orrick lawyer conducted comprehensive IP diligence in connection with a number of acquisitions made by Dover Technologies, part of Dover Corp., a large conglomerate.
• ECommerceGroup. An Orrick lawyer conducted comprehensive IP due diligence in connection with the acquisition of ECommerceGroup by First Data Corp.
• Evolve Products. Orrick provided this universal remote control manufacturer with IP due diligence.
• Fibertech Polymers Inc. Orrick provided IP due diligence for this paper waste stream processing systems and related products company.
• General Surgical Innovations, Inc. Orrick lawyers conducted due diligence reviews for this medical device company.
• Iconix Pharmaceuticals, Inc. Orrick represented Iconix in a Development and License Agreement with Incyte Genomics, Inc. and in a Collaborative Agreement with MDS Pharma Services (US) Inc.
• IMPAC Medical Systems, Inc. Orrick advised IMPAC in an OEM and Distribution Agreement with Siemens Medical Systems, Inc.
• iVillage Inc. iVillage, which operates its Web site at www.ivillage.com (AOL keyword, iVillage), is the leading on-line destination for women. Orrick has represented iVillage in a number of major strategic partnership/licensing transactions. Orrick lawyers also oversee iVillage's worldwide trademark portfolio and advises iVillage with regard to adversarial intellectual property matters.
• John Hancock Life Insurance Company. Orrick lawyers provided trademark, patent and licensing due diligence in connection with the acquisition by John Hancock of Signature Fruit Company out of bankruptcy.
• Merck KGaA. Orrick represented Merck in structuring and negotiation of a major manufacturing and marketing agreement with Kos Pharmaceuticals covering rights outside North America and Japan in a line of pharmaceutical products treating cholesterol disorders.
• Mitsubishi Electric Corporation. Orrick advises Mitsubishi in numerous licensing matters.
• Morgenthaler Ventures. Conducted due diligence reviews for investors in this venture firm of the patent and patent application portfolios of a number of medical device companies, including assessment of the strength of the company's current and potential proprietary position, and their "freedom to operate".
• New Enterprise Associates. Orrick provides this venture company with pre-investment diligence on patent portfolio and license agreements.
• Nisso Corporation. An Orrick lawyer conducted trademark due diligence in connection with FTC ordered divestiture of a portion of the Bayer Crop Science to Nisso.
• Nomura Securities International. An Orrick lawyer provided patent, trademark, trade secret, licensing due diligence in connection with Nomura's strategic investment in BeyondBond.
• Oak Hill Capital Management. Conducted due diligence reviews for investors in this venture firm of several companies' patent and patent application portfolios, including assessment of the strength of each company's current and potential proprietary position, and their "freedom to operate" in view of the patents of others. Technologies included medical test devices, wireless network services, and dental appliances.
• PDF Solutions, Inc. Orrick represented PDF Solutions in a Technology Collaboration Agreement with Toshiba Corporation.
• Pequot Capital. Conducted due diligence review for potential investor of a company's patent and patent application portfolio for a surgical device and method, including general assessment of the adequacy of the patent prosecution efforts and the prior art.
• Pioneer Corporation. Orrick advises Pioneer on technical standard group and specification issues and related patent and antitrust issues.
• PricewaterhouseCoopers LLP. Orrick represents PricewaterhouseCoopers in connection with a variety of technology transactions, strategic partnering, and related licensing matters. Orrick also advises PricewaterhouseCoopers with regard to U.S. and foreign trademarks and other intellectual property law matters.
• Prolinx, Inc. Orrick represented Prolinx in a Technology License Agreement with Applied Biosystems Group and in a Development, Production and Supply Agreement with Texas Instruments.
• Residential Funding Corporation. An Orrick lawyer conducted broad-based IP due diligence in connection with RFC's bid in bankruptcy to acquire parts of Conseco Finance.
• Royster-Clark, Incorporated. Royster-Clark is a leader in the agricultural industry, providing fertilizer, seed and crop protection products to farmers, as well as a wide range of agricultural services. An Orrick lawyer oversees the Royster-Clark trademark portfolio, conducts patent and trade secret diligence, and also represents the company on selected licensing and related intellectual property matters.
• Sarnoff Corp. An Orrick lawyer conducted comprehensive IP due diligence (primarily patent and trade secret) in connection with Sarnoff’s strategic investments in Princeton LightWave, AgileVision and Camsat.
• Toppoly Optoelectronics Corp. Orrick provides strategic patent counseling and licensing advice related to the design and manufacture of TFT LCDs for Toppoly Optoelectronics.
• University of California. Orrick provides IP due diligence relating to chemical, mechanical, electro-mechanical, electrical, and nanotechnology matters for UC.
• USA Zama. An Orrick lawyer conducted a due diligence review for this carburetor manufacturer.
• Vascular Solutions, Inc. Orrick lawyers conducted due diligence reviews for this medical device company.
• Vidamed, Inc. Orrick lawyers conducted due diligence reviews for this medical device company.
• Visionaria. An Orrick lawyer conducted IP due diligence on a strategic investment by Visionaria in VistaScape Corp.