Ropes & Gray has a robust, cross-practice team of 280+ attorneys and technical advisors with experience representing clients that invent, develop, manufacture, service or sell hardware and consumer technology, as well as the investors and lenders who buy, sell and finance these organizations. We represent clients in transactions and litigations across a wide range of specific technologies, including computer hardware and systems; cellular, wireless and Bluetooth technology; mobile devices and handheld electronics; wearables, digital health and medical devices; TVs, set-top boxes and monitors; and streaming devices and players. Recent clients include Samsung Electronics, Roku, LG Electronics, Honeywell International, HP, Xerox and Extreme Networks.
Our attorneys have significant experience advising hardware and consumer technology clients on:
- Early-stage investments, including planning, operations, and regulatory and compliance issues
- Forming a venture, securing capital and designing capital structures
- Tax issues for high-technology ventures
- Mergers and acquisitions
- Executive spin-offs, carve-out transactions and split-offs
- Structured financings and privatizations
- Standard compliance and FRAND issues, including licensing and litigation
- IP licensing, royalty and joint development agreements
- Strategic patent portfolio counseling and IP licensing for complex technological assets
- Litigations involving intellectual property, including matters involving patents, trade secrets, trademarks, trade dress, copyrights, false advertising and unfair competition
- Litigations and investigations concerning commercial, corporate and securities, antitrust, international risk and anti-corruption, and data privacy issues
Capabilities and Experience
Companies that develop the latest hardware or consumer technology and need legal advice on funding, compliance or IP protection can turn to Ropes & Gray for assistance. Our experience includes advising:
- Technology clients on the security aspects of home automation systems, wearable devices and geolocation tracking components, including privileged security assessments (testing of both hardware and software), security vulnerability remediation, and the implications of the EU’s General Data Protection Regulation, among other areas.
- iCapital Network in raising $440 million in new financing to enhance its platform technology, expand its alternative investment products and pursue strategic acquisitions.
- MicroVision, a laser scanning technology company, in SEC reporting, compliance and multiple financings.
- A leading technology company in connection with evaluating and negotiating a license for standard-essential patents.
- WHOI in connection with licensing and patent work for multiple underwater technologies, including vehicle communication systems for underwater communication with autonomous vehicles. We advised on the spinout of Lumasys, a manufacturer of underwater optical communications systems, and assisted in the licensing of this technology to an industrial partner, Sonardyne.
Hardware companies and consumer technology companies, and their investors, benefit from the interdisciplinary focus that Ropes & Gray offers across a wide range of strategic transactions. Our experience in this area includes advising:
- Rovi Corporation (now TiVo Corporation) in a complex patent licensing deal between Rovi and Intellectual Ventures, which resulted in two of the world’s leading media and entertainment patent portfolios being brought together under a unified, comprehensive licensing program for providers of over-the-top digital media services.
- Xerox in its acquisition of ITEC Connect, a provider of IT support and managed print services, as well as in its acquisition of Arena Group, a U.K.-based provider of office technology, solutions and services.
- A leading medical device company in its $1.65 billion acquisition of Mazor Robotics, a pioneer in robotic guidance systems.
- Charlesbank Capital in the investment of Park Place Technologies, a third-party hardware maintenance provider, alongside GTCR.
- MagneMotion, a U.S.-based developer of industrial machinery and technology hardware, in its sale to Rockwell Automation.
- Novanta, a global leader and supplier of photonics, precision motion and vision technologies to OEMs, in its acquisition of ThingMagic, a division of Trimble, that provides ultra-high-frequency radio frequency identification (RFID) reader modules and finished RFID solutions to original OEMs in the medical and advanced industrial markets.
- A Bain Capital-led consortium in the $18 billion acquisition of Toshiba Memory Corporation, which was the largest leveraged buyout and private equity deal ever in Asia and among the most complex M&A transactions globally in 2017 and 2018.
- Liberty Global on the financing aspects of its 50-50 joint venture agreement with Telefonica in connection with the merger of O2 and Virgin Media to create the leading fixed-mobile provider in the United Kingdom.
Ropes & Gray assists companies seeking to defend their hardware or consumer technology products, patents, and services in current or future litigation or investigations. Examples of our experience representing clients in federal, state and international regulatory and civil claims include:
- Achieved a series of wins on behalf of Emerson Electric in a long-running international dispute concerning mesh network technology. We won findings of non-infringement and invalidity of SIPCO’s asserted claims before the International Trade Commission (ITC), the Patent Trial & Appeal Board (PTAB), the Regional Court of Mannheim, Germany, and the European Patent Office (EPO) (in conjunction with German counsel), as well as appeals before the Federal Circuit and U.S. Supreme Court.
- Obtained a settlement for a leading consumer electronics company in a seven-year multijurisdictional dispute concerning imaging technology, including matters at the ITC (trade secret), the Eastern District of Texas (patent infringement), the District of Delaware (breach of contract), the PTAB, the Federal Circuit, the Third Circuit and the U.S. Supreme Court.
- Obtaining a win on behalf of Roku in a Section 337 investigation at the ITC filed by Universal Electronics involving remote control devices. Following a trial, the ITC issued a final determination finding two of Universal Electronics’ remote control technology patents invalid and finding that Roku’s redesigned products do not infringe the third patent.
- Representing LG Electronics in a 10-patent litigation filed by ParkerVision in the Western District of Texas. ParkerVision alleges that certain LG televisions with Wi-Fi modules infringe patents related to the downconversion of wireless signals. We also represent LG in corresponding inter partes review petitions.
- Represented numerous clients in both inbound and outbound SEP licensing and determination of FRAND terms for standards, including 3G, 4G, 5G, 802.11, H.264 and H.265.
- On behalf of a leading consumer electronics company, we filed inter partes review petitions at the PTAB against Conversant Wireless challenging two patents directed to graphical user interfaces for computing devices. The Board found all challenged claims unpatentable, which was affirmed by the Federal Circuit.
- Represented LoJack, a premier stolen vehicle recovery company in a month-long international arbitration in Hong Kong in a matter brought against a Chinese supplier for breach of warranty. In one of the largest arbitration awards ever decided in Hong Kong or China, our client won a $98.5 million award.
- We are representing an individual employee of a multinational advanced technologies company in connection with cross-border enforcement actions against the employer regarding corruption, fraud, export control violations and other related offenses over a 10-year period.
- Led the internal investigation on behalf of a Special Committee of the Board of Directors and represented a technology company in the multipronged regulatory inquiry into the events leading up to the company’s unexpected bankruptcy filing related to a failed billion-dollar joint venture with a multinational technology company specializing in consumer electronics, computer software and online services.
- Represented Sony in over 65 class actions filed against Sony entities alleging consumer harm as a result of the criminal cyberattacks on certain of Sony’s computer networks. These class actions sought in the aggregate to represent all customers in the United States whose user account information was alleged to have been placed at risk in the course of the cyberattacks. The majority of the plaintiffs’ claims were dismissed.
- Represented Cablevision in defending a class action challenging Cablevision’s failure to create full compatibility with third-party set-top boxes as unlawful tying and monopolization.