Representative Experience

Our attorneys have handled a range of matters related to licensing, intellectual property and mergers and acquisitions.

Licensing and Commercialization

Among our licensing and commercial matters, we have represented:

  • Penn Pharmaceutical Services (a U.K. company) in its agreements with several biotechnology and pharmaceutical companies.
  • An international medical device company in dozens of product license, distribution, manufacturing and reseller arrangements worldwide.
  • Edge Therapeutics on the in-license of a drug delivery system from SurModics.
  • U.S. patent for Medtronic directed to methods and devices for the treatment of intervertebral discs.
  • PluroGen Therapeutics, an early stage biotechnology company that provides clinically advanced burn, wound and skin care products, in connection with a significant equity investment from and entering into a distribution agreement with Medline, Inc., a privately held manufacturer and distributor of medical devices and health care products.
  • A U.S.-based provider of software in connection with a joint venture arrangement in Asia and several licensing and reseller arrangements for this software worldwide.
  • Public and private universities and hospital-based research institutions in licensing matters.
  • A major Korean health care company in reaching an agreement with a widely held U.S. public company in patent licensing and joint development of intellectual property.
  • A provider of data analytics services in licensing its technology to several major telecommunications service providers.
  • An e-commerce solutions provider in developing its patent portfolio and ensuring that its software was properly owned or licensed.
  • A global online gaming service in licensing its technology as an over-the-top service to a cable television service provider.
  • neuroFix Therapeutics, Inc. in its license of certain innovative technology related to the treatment of certain neurological diseases from the Children’s Hospital of Pennsylvania.
  • A software consulting firm in connection with the license of custom solutions to users of IBM ECM products.
  • A clinical software company in connection with the license of its proprietary patient management, site monitoring and clinical outcomes software to customers.
  • A security consulting company in connection with the license of its monitoring technology to the world’s premier developers of ATMs and bank vaults.
  • An agricultural technology startup company with licensing its proprietary fertilizer and soil amendment products based on recycled green organic waste. In addition, assisted with supply contracts for the green organic waste needed for manufacturing.
  • An audio/visual hardware company on a supply agreement for contract manufacturing of their latest invention in China.

Intellectual Property

  • Helped an e-commerce solutions provider develop its patent portfolio and ensure that its software was properly owned or licensed, and provided IP support to the transaction in which the company was acquired by one of the world’s largest Internet-based retailers.
  • Helped an educational software company develop a strategy for leveraging open source code while still developing a separate code set that remained proprietary; supported the company in negotiations and due diligence review in connection with its sale to a company that is a global leader in student learning technology.
  • Developed a patent portfolio for a commercial robotic cleaning equipment company and supported a transaction in which the company was acquired by one of the world’s largest manufacturers of institutional cleaning and hygiene products.
  • Represented an Israel-based company that developed innovative software for visualizing data in the sale of its intellectual property assets to a global software company.
  • Helped a provider of Internet mobilization software develop a patent portfolio that was acquired by a U.S. telecommunications company.
  • Represented a computer security software company in intellectual property due diligence for its acquisition of mobile device security solutions provider.

Mergers and Acquisitions

Among our merger and acquisition matters, we have represented:

  • Shenzhen Infinova and its Hong Kong-based subsidiary Infinova International (Infinova), a leader in high definition video surveillance solutions, on Infinova’s $85 million acquisition of Australian-based Swann Communications Pty Limited, a company specializing in the supply of surveillance and monitoring technology to the retail market.
  • Switzerland-based Axxiome Group, a global information technology and solutions provider for the financial services industry, in its acquisition of J9 Technologies, Inc., an information technology and services company. The acquisition allows Axxiome to extend its reach and product portfolio in the North American market.
  • Condeco Software, a U.K.-based leading global provider of office utilization and workspace scheduling solutions, in the acquisition of myVRM, a New York-based software company with workflow automation experience in video collaboration, content sharing, unified communications, virtual meetings and analytics.
  • Gaming Laboratories International, LLC (GLI), a global leader in gaming testing and professional services, in its acquisition of SLI Global Solutions, Inc., a leader in quality assurance and software testing services. With this acquisition, SLI Global Solutions and GLI combine to form one of the largest software testing and quality assurance service providers.
  • Vicon Industries, Inc. (VII: NYSE-MKT), an industry-leading designer, manufacturer and marketer of video security and surveillance systems, in its stock-for-stock merger with IQinVision, Inc., a designer and producer of high performance HD/megapixel IP cameras. The merger creates a global market leader of integrated solutions to the video security market and is consistent with Vicon’s strategy of providing high quality, proprietary solutions.
  • Excel Micro, Inc., a distributor of cloud email security and archiving solutions, in its acquisition by j2 Global, Inc. (NASDAQ:JCOM), a global provider of Internet services. The acquisition expands j2’s U.S. and Canadian email security customer base, reseller channels and channel expertise.
  • UXC Eclipse, the leading global implementation partner for intelligent business solutions, in the acquisition of Tectura North America. This acquisition will allow UXC Eclipse, a business unit of Australian IT solutions and services company UXC Limited, to become one of the largest Microsoft Dynamics resellers in the Americas.
  • Moda Technology Partners, Inc., a software company that provides technology solutions for the biopharmaceutical, consumer products, food processing and petrochemical industries, in the sale of all of its stock to Lonza, Inc., a Swiss publicly traded pharmaceutical company, in a transaction that represented more than a treblex return on investment for the venture capital and other investors in Moda.
  • A U.S.-based provider of software in connection with a joint venture arrangement in Asia and several licensing and reseller arrangements for this software worldwide.
  • KonciergeMD, a cloud-based consumer engagement company in its acquisition by Accolade.
  • Complex $15 million public cash merger-going-private transaction involving two computer software companies.
  • Seattle-based provider of online information resources to the securities and financial services industries, in an $11 million stock sale to a leading provider of professional information solutions.
  • neuroFix Therapeutics, LLC, the developer of NFC-1, in its acquisition by Medgenics (NYSE: MDGN). Hakon Hakonarson, M.D., Ph.D., Professor and Director of the Center for Applied Genomics at The Children's Hospital of Philadelphia (CHOP) founded neuroFix to pursue development of NFC-1 following a breakthrough genetic discovery. Medgenics acquired all outstanding shares of neuroFix for upfront consideration of $2 million cash, a series of performance-based milestone payments and sales royalties.
  • AltheRx, Inc., a privately held, clinical development company focused on advancing best-in-class compounds, in its merger with and into the newly formed Velicept Therapeutics, Inc. The merger will allow the advancement of Solabegron, the company’s lead candidate for overactive bladder, which completed two Phase II studies.