Selected 2001 Licensing and Technology Transactions

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Selected 2001 Licensing and Technology Transactions

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We leverage technical knowledge, business acumen and legal experience to structure, prepare and negotiate innovative and effective technology-related agreements.
For companies in the life sciences sphere, licensing intellectual property and establishing strategic alliances are critical. WilmerHale’s experienced licensing lawyers shepherd biotech, pharmaceutical, healthcare and medical device clients of all sizes through the complex transactions that make their business possible. Our attorneys excel at brokering material transfer agreements, manufacturing and supply agreements, confidentiality agreements and distribution agreements. They also frequently represent biotech venture capital clients as they license patents—the foundations of their companies—from leading academic institutions across the United States and Europe. Backed not only by their own experience but also the deep well of knowledge possessed by the firm’s patent, tax, antitrust and EU competition lawyers, our transactional attorneys are ready to handle even the most multifaceted matters. Our team helps clients protect their innovations, forge strategic alliances and successfully navigate a complex, dynamic industry.
Our clients in the ever-changing and fiercely competitive hardware, software, IT and services industries depend on us to strategize and negotiate transactions that take advantage of opportunities now while protecting their innovations and shoring up strong industry relationships for the future. We structure, negotiate and draft all types of licensing, distribution, product development, joint venture and strategic alliance agreements for these clients, often drawing on the deep experience of WilmerHale’s regulatory, intellectual property, business and tax lawyers. We represent both mature and emerging companies with business models centered around offering software and/or professional services relating to analyzing and extracting insights from large data sets. We frequently draft and negotiate data license agreements, software-as-a-service (SaaS) agreements, website terms and other services agreements in which data is the core subject of the license. We also advise technology clients on big data issues that arise in outsourcing, joint venture and other transactional matters. Our attorneys keep a close watch on internet-related legislative and regulatory developments in the United States, the European Union and elsewhere, and leverage our up-to-the-minute knowledge to advise clients in areas such as data privacy and security, copyright infringement, and export restrictions.

In 2001, we handled licensing and other technology-related agreements for clients, including deals that are helping to shape the future of science and technology. Selected transactions include:

  • American Home Products Corporation — Collaboration and license agreement with Taxolog to develop anti-tumor agents
  • Wildfire — Agreement to provide Wildfire voice-activated personal assistant technology to Bermuda Telecom customers
  • Curis — Strategic alliance with Micromed for development of antibody therapies
  • Upstreaminfo.com — License to Chevron of enterprise-wide system for upstream oil and gas asset management
  • ASML — Participation in industry consortia for development of next-generation lithography equipment
  • Staples — Advice on international privacy and click-through license issues in e-commerce
  • Hybridon — Cross-license of antisense patents and technology with Isis Pharmaceuticals
  • Syngenta — Joint venture with Land O' Lakes to develop value-added specialty high-protein and white corn hybrids for the food and feed markets
  • Applix — International distribution agreement with Aexis International covering France and Benelux
  • Millennium — Strategic collaboration with Abbott Laboratories for development and commercialization of medical solutions for obesity and diabetes
  • The SNP Consortium Ltd. — Agreements with Celera Genomics, Motorola and Applied Biosystems for construction of genome-wide SNP linkage map
  • NFL — Sponsorship agreements for Gatorade, Nestlé, Pizza Hut, RCA, Reebok and Visa in various foreign jurisdictions
  • Unipower Solutions — Joint development with Royal Ahold of portable device to provide personalized information to supermarket shoppers
  • Medical Scientists — Analysis of health care cost reductions in public-private health care management initiative with Pfizer and the State of Florida.
  • Avid — Advice on the internationalization of end-user license agreements for use in eight foreign countries
  • Triple G — License to HealthEast of health care lab automation system to manage data in over 200 clinical laboratories
  • Ardais — Strategic collaboration with the University of Chicago for collection and archiving of surplus human tissue from medical procedures
  • MKS Instruments — License of technology and patents to NEXX Systems for the advanced packaging and telecommunications industries
  • Cognizant Technology Solutions Corporation — Master agreement with Blue Cross of Northeastern Pennsylvania for technical and consulting services
  • Cambridge Heart — Appointment of Agilent Technologies as exclusive US distributor of cardiac stress-test system
  • Encompys — Joint venture among Accenture, Advent Software, Compaq, Microsoft and Bank of New York to provide straight-through processing solutions to asset management companies
  • Syngenta — Joint venture with Diversa to pursue opportunities in the field of animal feed and agricultural product processing
  • Millennium — Strategic alliance with Becton Dickinson for development of cancer diagnostics and pharmacogenomics
  • Saucony — Exclusive license of trademarks to First to the Finish for use on team athletic apparel
  • SI2 Silicon Integration Initiative, Inc. — License of technology from Cadence Design Systems for electronic design automation industry standardization initiative
  • Go America Wireless Data Solutions — Principal outside counsel for technology licensing and strategic alliances
  • The Medicines Company — Distribution agreement with CSLS for Angiomax in Australia
  • IAVI International AIDS Vaccine Initiation — Collaboration with Medical Research Council (UK) and University of Nairobi for developing the first AIDS vaccine made specifically for Africa
  • Mitel — Bundling of Mitel's Linux-based Network Server Solutions Group products with Compaq PC's sold through PC Connection
  • CollaGenex Pharmaceuticals — Grant to Atrix Laboratories of exclusive U.S. marketing and manufacturing rights for CollaGenex's dental therapies
  • Arch Wireless — Development and supply agreement with Advantra International for next-generation wireless communications modules
  • Starent Networks — Incorporation of Starent Mobile Gateway platform into Samsung wireless infrastructure offerings
  • Icagen — Collaboration with Abbott Laboratories focused on the development and commercialization of pharmaceutical products for the treatment of human pain indications
  • Analog Devices — Principal outside counsel on patent and technology licensing matters
  • Airvana — Joint development agreement with Nortel Networks for high speed 3G wireless data products
  • Flexplay Technologies Inc. — Joint development with GE Plastics of advanced DVD materials
  • BOSE — Advice on international distribution and sale of consumer products
  • Channelwave — License of enterprise-wide partner relationship management system to Cable & Wireless
  • American Home Products Corporation — Strategic collaboration with Karo Bio to research and develop drugs to prevent and treat atherosclerosis
  • Gomez — Joint venture with Softbank Finance and Morningstar Japan to provide Gomez technology and services in Japan
  • NHL — Licensing agreements for broadcast rights for the NHL Center Ice game package on cable and satellite television systems in the United States and Canada
  • First Genetic Trust — Research collaboration with GlaxoSmithKline to study genetic basis of adverse drug reactions