Intellectual Property Transactions

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Ropes & Gray’s intellectual property transactions team offers a full suite of corporate skills to leverage IP through investments, corporate structuring, financing, and strategic and commercial transactions.

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“We are very pleased with the quality of work and responsiveness of the IP group at Ropes. Their experience and attention to detail are major factors.” IP Client, Chambers USA
“On transactions, they have an understanding of business needs and creative solutions.” Client, Managing IP
“Sources say: ‘They give really precise advice and at the right time.’” Chambers Asia

Overview

Intellectual property plays a critical role in business and in the corporate and transactional matters that are key to growth. Ropes & Gray has one of the broadest and deepest IP transactional practices in the world with 13 partners on three continents focusing on IP-intensive transactions across a wide variety of 21st century industries, including life sciences, health care, technology, media and telecom, financial services, retail and consumer products. Our team consists of corporate attorneys focused on helping clients establish corporate structures, complete strategic and commercial transactions, and execute against long- and near-term business priorities in circumstances in which IP assets are critical to the structure, the deal, and the goals.

We assist clients at all stages of the business cycle with the formation and financing of new ventures, the restructuring, financing, and commercial operation of established businesses, and the sale and acquisition of companies or defined assets, products, and services. Our attorneys are exceptionally well versed in handling structures, transactions, and operations where proprietary brand, media, technology, data, content, methodology and other proprietary intangible assets are key to achieving the client’s goals. Our attorneys regularly lead matters focused on:

Transactions

  • Technology development, acquisitions and divestitures
  • Collaborations, strategic alliances and joint ventures
  • IP licensing for complex technological and pharmaceutical assets
  • Commercial agreements, including co-promotion, outsourcing, manufacturing and supply
  • Specialized IP holding company creation, asset monetization and debt structure strategies
  • IP litigation settlements

Strategy

  • Patent portfolio evaluation and strategy
  • Patent invalidity/non-infringement opinions
  • Strategic brand management
  • Trademark and copyright protection

Deal Support

  • Structuring and operationalizing mergers, acquisitions, divestitures, spinoffs and reorganizations
  • IP diligence
  • International technology transfers and cross-border transactions

 

Experience

Transactions:

  • Represented Akebia Therapeutics in an exclusive licensing agreement with Janssen Pharmaceutical, NV, one of the Janssen Pharmaceutical Companies of Johnson & Johnson, under which Akebia in-licensed a portfolio of well-characterized HIF pathway compounds with potential applications across multiple therapeutic areas.
  • Ropes & Gray represented Boehringer Ingelheim (BI) in reaching a global agreement with AbbVie to jointly develop and commercialize a biologic antibody for the treatment of psoriasis.
  • Represented Fortress IP Finance Group, a leading global investment management firm, in a series of IP finance transactions designed to finance and monetize companies with IP portfolios.
  • Ropes & Gray served as lead outside counsel to Pfizer, Inc. in connection with its ground-breaking PD-1 oncology collaboration with Merck KGaA. The transaction was honored with the “2015 Deal of Distinction” Award in the life sciences category by the Licensing Executives Society.
  • Advised Innovent Biologics Inc., a leading bio-pharmaceuticals company based in China, with regard to a collaboration of at least three cancer treatments with Eli Lilly and Company, a global healthcare leader. 
  • Advised Dunkin’ Brands Group, Inc. on its successful refinancing of its senior secured credit facility with a new $2.4 billion securitized financing facility based substantially on securitization of intellectual property and related revenue from IP-based licensing and franchise arrangements.
  • Represented InFront Sports & Media AG its purchase of Omnigon Communications LLC, a New York-based multinational provider of digital solutions to leaders in the sports, media and entertainment industries. In addition Ropes & Gray has handled complex outsourcing, joint ventures, technology and IP spinouts, business restructuring and asset sales.
  • Handled a complex patent licensing deal between Rovi Corporation (now TiVo Corporation) and Intellectual Ventures (“IV”), 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 (OTT) digital media services.
  • Represented the National Football League (NFL) in its spinout and repositioning of NFL On Location (NFL OL), its premium events and hospitality business. 

Strategy:

  • Represents Butler, Shine, Stern & Partners (BSSP), a major marketing communications agency, in a variety of advertising, commercial, and intellectual property matters, including negotiating advertising services agreements, conducting copy review and rights clearance, and counseling the agency on FTC truth-in-advertising compliance.
  • Advised SFW Capital, and its portfolio company Essen BioScience, Inc., a Michigan-based laboratory equipment company, in all aspects of the IP due diligence, including review of patent documents for various potential buyers, related to its sale to Sartorius Group AG, a German pharmaceutical and laboratory equipment supplier. Essen BioScience was acquired by Sartorius for $320 million. 
  • Advised General Atlantic Service Company LLC in its investment in Synaptive Medical Inc., a Toronto, Canada-based leading medical device and technology company. Ropes & Gray performed IP due diligence for the transaction, including a high-level review of the Company’s IP portfolio, verification of IP assignment and ownership records using publicly-available databases, and searches of publicly-available litigation databases to identify any IP-related litigation issues.
  • Advised ethris GmbH, a growing biopharmaceutical company based in Munich, Germany, on their patent portfolio strategy, licensing and collaboration strategies and strategic partnerships related to mRNA modification and delivery techniques for treatment of a wide variety of illnesses.
  • Represented the adidas Group in the sale of its Rockport shoe business to a new entity formed by New Balance and Berkshire Partners. This representation included negotiation of trademark and technology licenses from certain Adidas Group entities to the purchasers.
  • Advising TSG Consumer Partners with their portfolio management and enforcement of the TSG mark. We also represent the investment arm of TSG, LLC and handle due diligence for private equity transactions, which included TAM Beauty, Glanbia, thinkThin, and Backcountry.com.

Deal Support:

  • Represented TPG in its definitive agreement with Intel Corporation to establish McAfee, a newly formed, jointly owned independent cybersecurity company. The transaction created one of the world’s largest pure-play cybersecurity firms.
  • Represented Baring Private Equity Asia in its acquisition of a 35 percent stake in TELUS International. The agreement valued TELUS International at CAD1.2 billion, with TELUS Corporation shareholders retaining a 65 percent interest in the business.
  • Ropes & Gray represented Boston-based BV Investment, a middle-market private equity firm focused on the business services and IT services sectors, in its purchase of a minority interest in C-4 Analytics, an award-winning digital marketing firm. 
  • Represented leading middle-market private equity sponsor Genstar Capital in its majority equity investment in Blue Star Sports, a leading provider of sports management software and payment solutions.
  • Ropes & Gray advised Kohlberg & Company in its definitive agreement to acquire the ownership interest in MarketCast from RLJ Equity partners, LLC and State Street Global Advisors. Los Angeles-based MarketCast is a leading provider of market research services and data analytics to the entertainment industry.

Awards

  • Chambers Global 2017: The World’s Leading Lawyers for Business – Intellectual property group recognized globally, in the Asia-Pacific region, and in China, South Korea and the U.S., with multiple attorneys ranked as leaders in the field.
  • Chambers USA 2017: America’s Leading Lawyers for Business – Intellectual property group recognized nationally and in California, Illinois, Massachusetts and New York, with multiple attorneys ranked as leaders in the field.
  • Chambers Asia 2017: Asia’s Leading Lawyers for Business – Intellectual property group recognized Asia-wide and in China, Japan and South Korea, with multiple attorneys ranked as leaders in the field.
  • Legal 500 US 2016 – Ranked as a leading “Patents: Portfolio Management and Licensing” practice with multiple attorneys ranked as recommended in these fields.
  • Legal 500 Asia Pacific 2016 – Ranked in China as a leading "Intellectual Property – Foreign Firms" practice.
  • U.S. News & World Report: Best Lawyers “Best Law Firms” Report 2017 – Top ranked nationally in information technology law, trademark law, patent law, patent litigation and intellectual property litigation.
  • The Best Lawyers in America 2017 – Multiple intellectual property partners recognized as leaders in their field.
  • Asian Legal Business IP Rankings 2016– Ropes & Gray listed as a leading law firm for patents in China.
  • Vault Law Firm Rankings 2017 – Ranked among the top 15 Best Law Firms for intellectual property.
  • Who’s Who Legal 2017 – Eight IP attorneys designated on this elite list for patent law.
  • LMG Life Sciences Guide 2016 – IP practice recognized, with multiple attorneys named “Life Science Stars” for IP.
  • World Trademark Review’s WTR1000 2017– Ranked as a top firm in Massachusetts for trademark law, with several attorneys recognized as leaders in their fields.
  • IAM Patent 1000 2016 – Ropes & Gray ranked nationally and in California, Illinois, New York, Washington, D.C., Massachusetts, and China with multiple partners recognized.
  • Managing IP’s IP Stars 2016 – Ranked in California, China, Japan, Massachusetts, New York and nationally in the US. Multiple attorneys listed as “IP Stars.”