Intellectual Property Transactions

As the most valuable corporate assets become increasingly intangible, the importance of identifying and solving intellectual property-related issues arising in complex corporate transactions becomes ever more essential. Our Intellectual Property Transactions Group counsels clients on intellectual property (IP) issues arising in all types of corporate and financial transactions, including:

• Acquisitions and divestitures of IP and technology assets
• Joint ventures and joint development arrangements
• Licensing and technology transactions
• Research and development agreements
• Securitization of intellectual property in debt transactions
• Technology services agreements
• IP portfolio development counseling
• IP due diligence
• Internet and new media issues

We provide critical support on nearly every transaction in which the firm is involved—including mergers and acquisitions, capital markets, bankruptcies and financings—handling critical IP due diligence and the development of intellectual property portfolio strategies. The group also works closely with corporate, antitrust and tax lawyers in order to deliver intellectual property law advice from an integrated, multidisciplinary point of view.

One emphasis of the Intellectual Property Transactions Group is representing multinational companies in cross-border transactions and financial offerings in multiple jurisdictions. With members in New York, California and Europe, our global reach enables the group to meet the demands of our multinational clients and to provide sophisticated and up-to-the-minute advice in relation to IP law and its development on a global basis. We also have considerable experience advising multinational companies on the intellectual property and related regulatory issues inherent in operating in multiple jurisdictions. A particular focus in this area is strategic advice relating to prosecution and management of global IP portfolios.

Shearman & Sterling's Intellectual Property Transactions Group was built through selective recruitment and training to create a group having outstanding legal and technical credentials. Our intellectual property attorneys hold degrees in fields that include chemical engineering, computer science and biochemistry, and many of our attorneys are registered to practice before the US Patent & Trademark Office. Group members also have work experience as scientists and engineers with leading life science and technology companies. In addition, attorneys in the group have experience at the US Patent & Trademark Office and as in-house intellectual property counsel in a variety of fields, including software, consumer products and media/entertainment.

Notable Representations

A selection of our notable, global intellectual property transactions includes representations of:

• Abu Dhabi United Investment & Development in its acquisition of Manchester City Football Club
• Aditya Birla Group in its acquisition of Columbian Chemicals Company from One Equity Partners
• Advanced Technology Investment Company in its $3.9 billion acquisition of Chartered Semiconductor Manufacturing and in the creation of GLOBALFOUNDRIES Inc.
• Anglo American plc in its $932 million sale of Moly-Cop and AltaSteel to OneSteel Limited
• Avenue Capital Group in its acquisition of Milacron Inc. with DDJ Capital Management, LLC
• B/E Aerospace in its $400 million acquisition of UFC Aerospace Corp.
• Boston Scientific Corporation in the $1.5 billion sale of its Neurovascular Business to Stryker Corporation
• Corning in its acquisition of Axygen
• Daimler AG in various transactions involving Chrysler
• Danone in its acquisition of Medical Nutrition USA, Inc.
• Dassault Systèmes in its $600 million acquisition of IBM's sales and client support business
• Dow Chemical Company in the divestiture of its global polypropylene business to Braskem; $15.7 billion acquisition of Rohm and Haas; $1.7 billion sale of Morton Salt; and sale of Styron to Bain Capital
• Federal Republic of Germany regarding legal matters related to the restructuring of the General Motors Group and Adam Opel GmbH
• FINRA in its agreement with NYSE Euronext to assume responsibility for performing the market surveillance and enforcement functions currently conducted by NYSE Regulation
• Francisco Partners LP in its acquisition of the Grass Valley Broadcast business from Technicolor; and in its acquisition of QuadraMed Corporation
• Health Grades, Inc. in its sale to an affiliate of Vestar Capital Partners V, L.P.
• Intuit Inc. in its acquisition of PayCycle, Inc.
• JBS S.A. in its $2.8 billion acquisition of 64% of Pilgrim's Pride Corporation in its plan of reorganization
• Mubadala in its $8.0 billion global business partnership with General Electric
• NicOx in connection with a €70 million rights offering
• Novartis in its €925 million acquisition of the specialty generic injectables business of EBEWE Pharma
• PDL BioPharma, Inc. in connection with a $300 million securitization transaction intended to monetize certain of PDL's antibody humanization patents and royalties
• Register.com, Inc. in its acquisition by Web.com Inc.
• sanofi-aventis in its acquisition of BMP Sunstone Corporation
• Shiseido Company, Limited in its acquisition of Bare Escentuals, Inc.
• Sony as part of a consortium, in the $4.5 billion acquisition of Nortel’s patents portfolio
• STMicroelectronics N.V. in its sale of Numonyx Holding B.V. to Micron Technology, Inc.
• SunGard Data Systems Inc. in the $1.8 billion sale of its Higher Education businesses to affiliates of Hellman & Friedman
• Symphony Technology Group in its acquisition of MSC.Software Corporation; and in its sale of The Capital Markets Company NV
• Synthes, Inc. in its pending $21.3 billion acquisition by Johnson & Johnson
• Twitter, Inc. in its acquisition of Dasient, Inc.
• Vector Capital Limited in its acquisition of the entire issued share capital of Trafficmaster Plc
• Vonage Corporation in connection with various capital markets and finance transactions