Intellectual Property
and Technology

Davis Polk's Intellectual Property and Technology Group regularly addresses the IP and technology issues that matter most to our clients. We do so with sensitivity to our clients' objectives and with a sophisticated understanding of the contexts in which these issues may arise and the challenges our clients may encounter in the future. IP and technology transactions tend to be highly bespoke so we place a strong emphasis on quality drafting and take a common sense approach to negotiations. 

Applying our understanding of markets, competition, technology and IP law, the Intellectual Property and Technology Group calls on in-depth industry experience and extensive scientific training to provide comprehensive counseling to technology and media companies, financial institutions and pharmaceutical and biotechnology companies on the gamut of today’s most high-level IP and technology issues, including in connection with:

  • Patent acquisition and cross-licensing agreements
  • Technology research and collaboration
  • IP joint ventures
  • Copyright licensing and programming rights agreements
  • Trademark licensing and co-existence arrangements
  • Software and mobile application development and exploitation
  • E-commerce and website operations
  • Product manufacturing, supply and distribution
  • Sponsorship and marketing arrangements
  • Outsourcing and IT services
  • Other IP- and technology-related exploitation vehicles

Davis Polk’s Intellectual Property and Technology lawyers give strategic advice to our clients with respect to IP and technology matters arising from their licensing, collaboration, research and development activities, including issues concerning the scope of their licenses, revocability and transferability of applicable agreements, the effect of corporate structure on such activities and bankruptcy-related issues affecting their IP rights under such agreements. Our legal solutions to these often novel issues involve innovation and cross-practice experience that we deliver seamlessly through our integrated services.   

Our lawyers also help our clients to identify, prioritize and protect their core value propositions with patents and other appropriate IP assets. We focus on building and shaping IP and technology portfolios that strongly reflect and advance our clients’ strategic business goals and relationships.

Recognition

  • Ranked nationally among U.S. law firms – Legal 500 U.S.: Davis Polk’s “IP transactional practice has ‘a strong bench of high-quality lawyers all trained as commercial lawyers as well as intellectual property experts which distinguishes it from many firms.’” 
  • Ranked Band 2 in Media & Entertainment: Corporate: New York – Chambers USA 2014 and 2013: Davis Polk is “known for long-standing involvement in major corporate transactions on behalf of some of the country’s most significant entertainment and media companies.” 

Notable Matters

  • Comcast. We advised Comcast on:
    • The corporate, intellectual property and antitrust aspects of its agreement with General Electric to form the NBCUniversal joint venture
    • Its joint venture with Cisco and Motorola regarding the development and commercialization of the conditional access technology
    • Various copyright matters with respect to the deployment of new content and distribution technologies.
    • Its minority investment in Houston Regional Sports Network, L.P. and its general partner, including the negotiating of media rights license agreements, on behalf of the network, with the Houston Astros and Houston Rockets.
    • Its negotiation of a patent portfolio cross-license with Verizon
    • Its acquisition of a license to Gemstar’s patent portfolio, in connection with a $250 million investment in a joint venture for the development of next-generation IPG technology. 
    • A joint venture with Verizon Wireless for the development of technology to better integrate wireline and wireless products and services, and its $3.6 billion sale by SpectrumCo, a joint venture with Time Warner Cable and Bright House Networks, of 122 Advanced Wireless Services spectrum licenses to Verizon Wireless
    • Pending friendly $45.2 billion all-stock merger with Time Warner Cable, which is among the largest providers of video, high-speed data and voice services in the United States
  • Bertelsmann. We advised Bertelsmann on the:
    • Combination with Pearson of their trade book publishing companies, Random House and Penguin, creating the world’s largest trade book publishing company, Penguin Random House
    • Sale of its 50% interest in the world’s second-largest record label, SonyBMG, to Sony and Bertelsmann’s acquisition of selected European music catalog assets from SonyBMG.
  • Aetna. We advised Aetna on its $500 million acquisition of Medicity, a Salt Lake City, Utah-based health information exchange technology company.
  • ARM Holdings. We advised ARM Holdings on its leading participation in a consortium of major technology companies affiliated with Allied Security Trust to obtain rights to MIPS Technologies’ patent portfolio, which includes 580 patents covering microprocessor design, system-on-chip design and other related technology fields.
  • Baidu. We advised Baidu on music licensing, search engine and advertising agreements.
  • Banco de Bogotá. We advised Banco de Bogotá on its license and services agreement with S1, Inc. where Banco de Bogotá will license customized Internet banking software for use with its clients and receive development and support services.
  • Citibank. We advised Citibank in its pre-purchase of AAdvantage frequent flyer miles from American Airlines as part of an amendment and extension of the existing Citi/AAdvantage credit card agreement. 
  • Cosan. We advised Cosan S.A. Indústria e Comércio in its $12 billion joint venture with Shell International Petroleum Company Limited in Brazil for the production of ethanol, sugar and power, and the supply, distribution and retail of transportation fuels.
  • Elpida Memory. We advised Elpida Memory, a debtor in a corporate reorganization proceeding in Japan, on its Chapter 15 case and in obtaining U.S. recognition of its Japanese plan of reorganization
  • Form Factor. We advised Form Factor on its patent enforcement strategy against infringing global competitors.
  • We have advised Golf ChannelNBC Sports NetworkComcast SportsNetG4 and E!, among others, in connection with various programming and content distribution matters.
  • Harvard University. We advised Harvard University on its agreement with Google allowing Google to digitally index certain book collections of Harvard’s library and make them full-text searchable via free online access.  
  • Intermec. We advised Intermec on resolving its dispute with Symbol Technologies involving patent portfolios directed to wireless (WiFi) and RFID technologies and standards.
  • NBCUniversal. We advised NBCUniversal on its acquisition of Microsoft’s 50% share of the MSNBC Digital Network joint venture.
  • Novo Nordisk. We advised Novo Nordisk on various technology transactions, including its acquisition of certain intellectual property rights from Neose Technologies relating to the discovery, research, development and commercialization of compounds and products for use in the prevention or treatment of acquired or hereditary hemorrhagic disorders and the restructuring of its relationships with certain of its research and development partners, following its decision to exit the oncology area. 
  • Roche. We advised Roche on its alliance with Alnylam Pharmaceuticals, a U.S. biotechnology firm, in which Roche obtained a non-exclusive license to Alnylam’s technology platform for developing RNAi (RNA interference) therapeutics. We advised Roche in connection with its antibiotics partnership with Spero Therapeutics, a product-focused biopharmaceutical company developing novel treatments for bacterial infections, and with its obligations under a complex license agreement with a competitor. We also advised Roche on its:
    • $46.8 billion acquisition of the public minority in Genentech, a biotechnology company
    • $8.3 billion acquisition of InterMune, a biotechnology company focused on the development of innovative therapies for pulmonology and orphan fibrotic diseases
    • $6.7 billion unsolicited proposal to acquire Illumina, a developer of life science tools and integrated systems for genetic analysis
    • $3.4 billion hostile acquisition of Ventana Medical Systems, a leader in the fast-growing histopathology (tissue-based diagnostics) segment
    • $450 million acquisition of IQuum, the leader in developing the lab-in-a-tube technology
    • $230 million acquisition of Anadys Pharmaceuticals, a developer of therapeutics for hepatitis C infection
    • $220 million acquisition of Constitution Medical Investors, a developer of innovative laboratory products
  • Shire. We advised Shire on the divestiture of its DERMAGRAFT assets to Organogenesis, a regenerative medicine company. We also advised Shire on its:
    • $54.8 billion pending acquisition by AbbVie in the largest takeover of a European target by an American company
    • $4.2 billion acquisition of ViroPharma, an international biopharmaceutical company committed to developing novel solutions to address unmet medical needs
    • $2.6 billion acquisition of New River Pharmaceuticals, a specialty pharmaceutical company developing pharmaceuticals that are generational improvements of widely prescribed drugs
    • $750 million acquisition of Advanced BioHealing, a biotechnology company
    • $325 million acquisition of Lotus Tissue Repair, a biotechnology company developing the first protein replacement therapy for the treatment of dystrophic epidermolysis bullosa
    • $325 million acquisition of FerroKin BioSciences, a clinical stage biotechnology company dedicated to improving the management of patients with iron overload
    • $260 million acquisition of Lumena Pharmaceuticals, a privately held biopharmaceutical company
  • Shionogi. We advised Shionogi on its collaboration and license agreement with Egalet on the development and potential commercialization of multiple oral abuse-deterrent hydrocodone opioid product candidates
  • Smith & Nephew. We advised Smith & Nephew on its:
    • $1.7 billion acquisition of ArthroCare, an Austin, Texas-based developer and manufacturer of surgical devices, instruments and implants that enhance surgical techniques
    • $110 million acquisition of Blue Sky Medical Group, a privately held medical device company
    • Biologics and clinical therapies joint venture with Essex Woodlands, a biotechnology growth equity and venture capital firm
    • Acquisition of Adler Mediequip and the brands and assets of Sushrut Surgicals, an Indian leader in the field of orthopedic implants and instrumentation for traumatology, spine and reconstructive surgery
  • Solvay. We advised Solvay in connection with its agreement with INVISTA to renew their joint venture to manufacture adiponitrile (ADN), a key intermediate in the production of Polyamide 6.6, which ultimately becomes part of airbags, automobile parts, carpet, workout apparel and outdoor equipment.
  • Sony. We advised Sony Corporation on the enforcement of various Sony patents relating to its consumer electronics technology.
  • Symantec. We advised Symantec Corporation on its acquisition of the authentication and identity security business of VeriSign Inc. for $1.28 billion in cash by way of an asset purchase agreement. The acquisition includes the licensing of the VeriSign trademark and domain name to Symantec. 
  • Syngenta. We advised Syngenta in connection with various technology transactions, including its crop technology exchange agreement with DuPont relating to certain insect control products and its collaboration with Diversa to establish a shared biotechnology research platform for new plant science applications in various areas, including in the biofuel field.
  • TE Connectivity. We advised TE Connectivity on its:
    • $2.1 billion acquisition of Deutsch Group, a French provider of connectivity solutions for harsh environment applications
    • $1.7 billion acquisition of Measurement Specialties, which designs and manufactures sensors and sensor-based systems
    • $1.3 billion acquisition of ADC Communications, a telecommunications equipment company
    • $675 million sale of its Wireless Systems business to Harris Corporation
    • $490 million acquisition of the SEACON group, which serves the military marine and sub-sea sectors for remotely operated vehicles and autonomous underwater vehicles
    • $425 million sale of its Radio Frequency Components and Subsystem business to Cobham Defense Electronic Systems
    • $380 million sale of its Touch Solutions business to The Gores Group
  • Texas Instruments. We advised Texas Instruments on the negotiating of patent portfolio cross-licensing agreements. 
  • Warner Chilcot. We advised Warner Chilcott on:
    • Its agreement to terminate its existing co-promotion agreement with Novartis and purchase the U.S. rights to Enablex from Novartis for $400 million in cash.
    • LEO Pharma’s re-acquiring of Warner Chilcott’s exclusive product licensing rights in the U.S. to its topical psoriasis treatments, as well as rights to all products in LEO Pharma’s development pipeline, and acquiring all inventories of the products for a one-time cash payment of $1 billion.
  • Yahoo. We advised Yahoo on digital media patent strategy and risk assessment, e.g. for search & retrieval, recommendation engines, user interface.