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Practice/Industry Group Overview

The Intellectual Property and Technology Transactions Group advises clients on a broad range of intellectual property (IP) and technology issues confronting today’s businesses. The Group structures, drafts and negotiates IP- and technology-intensive transactions. These transactions include the IP and technology aspects of mergers, acquisitions, joint ventures, spin-outs, financings and other corporate transactions, as well as IP and technology acquisitions, divestitures, licenses, collaborations, outsourcing and settlements.

SELECTED REPRESENTATIONS

Recent Sullivan & Cromwell experience in corporate and other transactions involving intellectual property and technology include representing:

  • Ally Financial, in the $4.2 billion sale of its operations in Europe and Latin America, and its share in a joint venture in China, to General Motors Financial.
     
  • Altor Equity Partners, in its acquisition of Orchid MPS Holdings, a worldwide designer and manufacturer of orthopedic and dental implants, medical devices and surgical instruments.
     
  • American Express, in its joint venture with vente-privee.com to launch an online platform for private sales of luxury goods in the United States.
     
  • Amgen, in its $10.5 billion acquisition of Onyx Pharmaceuticals, $315 million acquisition of Kai Pharmaceuticals, $1.16 billion acquisition of Micromet, $300 million acquisition of Alantos Pharmaceuticals, $300 million sale of Amgen KK to Takeda Pharmaceutical, $420 million acquisition of Ilypsa, and $1 billion acquisition of BioVex Group.
     
  • Anheuser-Busch InBev, in its grant to Constellation Brands of exclusive, perpetual U.S. rights in the trademarks, designs and recipes for Corona and other Grupo Modelo beer brands, in connection with its related $20.1 billion acquisition of the remaining stake it did not already own in Grupo Modelo, and in the related sales of Compañía Cervecera de Coahuila for $2.9 billion, and a 50 percent interest in Crown Imports for $1.85 billion, to Constellation Brands.
     
  • AT&T, in its $950 million sale of AT&T Advertising Solutions and AT&T Interactive to an affiliate of Cerberus Capital Management.
     
  • Avon Products, in the sale of its 75 percent ownership interest in Avon Japan to TPG for cash and prepaid royalties for certain intellectual property licenses.
     
  • Billabong, in the $460 million sale of a 51.5 percent interest in Nixon, its watch and accessories brand, to an investor group.
     
  • Cablevision, in its $1.4 billion acquisition of Bresnan Communications, a provider of communications services to subscribers in Colorado, Montana, Utah and Wyoming.
     
  • CGI Group, in its $3.1 billion acquisition of Logica.
     
  • CLS Bank, in its outsourcing to IBM of IT infrastructure used in the high-volume settlement of foreign exchange considered to be essential to the global financial system.
     
  • Collective Brands, in its $2 billion sale to a consortium, its $91 million acquisition of Collective Licensing International and its $800 million purchase of Stride Rite.
     
  • Cree, in its $200 million acquisition of COTCO Luminant Device.
     
  • Cúram Software, in its acquisition by IBM.
     
  • Cymer, in its $3.9 billion acquisition by ASML Holding.
     
  • Fiserv, in its $465 million acquisition of CashEdge.
     
  • Gildan Activewear, in its $350 million acquisition of Gold Toe Moretz and its $88 million acquisition of Anvil Holdings.
     
  • Michael Rubin, chief executive officer of GSI Commerce, in the $2.4 billion acquisition of GSI Commerce by eBay.
     
  • HSBC Holdings, in the separation and allocation of rights in technology, trademarks and other IP in connection with the $2.6 billion sale of its credit card and retail services business in the United States to Capital One Financial.
     
  • IMS Health, in its $5.2 billion acquisition by investment funds managed by TPG Capital and the CPP Investment Board.
     
  • ING Groep, in the separation and allocation of rights in technology, trademarks and other IP in connection with the $3.1 billion sale of ING Bank of Canada (ING Direct Canada) to The Bank of Nova Scotia; the $9 billion sale of its ING Direct USA online banking operation to Capital One Financial; and in the $3.8 billion sale of its Latin American pensions, life insurance and investment management operations.
     
  • Intel, in connection with numerous IP and technology licensing and strategy matters, including its worldwide patent cross-license and settlement with Advanced Micro Devices; its patent agreement with GlobalFoundries; its worldwide patent cross-license and settlement agreement with NVIDIA; and intellectual property and joint development matters in connection with entering into agreements to expand the NAND Flash memory joint venture between Intel and Micron Technology.
     
  • IntercontinentalExchange, in its $8.2 billion acquisition of NYSE Euronext and in its joint proposal with NASDAQ OMX Group to acquire NYSE Euronext for approximately $11.3 billion.
     
  • Heyman family, in its $3.2 billion sale of International Specialty Products to Ashland.
     
  • Ipsen Pharma, a global specialty pharmaceutical group headquartered in Paris, in its $85 million acquisition of a 20 percent stake in Inspiration Biopharmaceuticals.
     
  • Kodak, in connection with its worldwide patent cross-licenses with Agfa, Samsung and LG and its worldwide restructuring, including the sale of its portfolio of 1,100 digital imaging patents to Intellectual Ventures and series of associated patent licensing transactions with 12 licensees including Apple, Google, Microsoft, Facebook, Samsung, Amazon, Adobe, Fujifilm, HTC, Huawei, Research in Motion and Shutterfly.
     
  • McCartney Productions, in an agreement with Hewlett Packard to digitize and deliver via a private cloud the library of former Beatle Paul McCartney.
     
  • Microsoft, in the creation of CPTN Holdings—a consortium of technology companies including Apple, EMC and Oracle—and the consortium’s acquisition of 882 patents and patent applications from Novell in connection with Attachmate’s acquisition of Novell.
     
  • Nippon Steel, on licensing matters in connection with its agreement with Ternium to form a $350 million joint venture in Mexico for the manufacture and sale of steel sheets primarily to serve the Mexican automobile manufacturing market.
     
  • NXP, in its $85 million acquisition of GloNav and in the sale of its television systems and set-top box business lines to Trident Microsystems and its acquisition of a majority stake in Trident for $190 million.
     
  • Pharmasset, in the IP aspects of its $11 billion acquisition by Gilead Sciences.
     
  • Philips Electronics, in many transactions, including the $10.3 billion sale of NXP, its semiconductors business, to KKR and Silver Lake Partners.
     
  • Popular, in the sale of a 51 percent interest in its processing subsidiary, EVERTEC, and related processing, merchant acquiring and technology businesses, to Apollo Management, through establishment of a $900 million joint venture.
     
  • priceline.com, in its $1.8 billion acquisition of KAYAK Software.
     
  • Rhône Capital, in connection with its $1.3 billion simultaneous acquisitions of Evonik Carbon Black and related entities (the ECB Group) and the ECB Group’s Chinese joint venture.
     
  • Rhône Capital III, in its $485 million acquisition of International Paper’s Arizona Chemical business, a leading global supplier of pine chemicals for adhesives, inks and coatings, lubricants, fuel additives, mining and oleochemicals markets holding numerous intellectual property assets including patents.
     
  • an investor consortium led by Silver Lake Partners, related to intellectual property and licensing matters in connection with its $2 billion acquisition of a 65 percent interest in Skype Technologies from eBay.
     
  • Silver Lake Partners and Skype, in connection with the $8.5 billion sale of Skype to Microsoft.
     
  • Skype, in its widely reported agreement with Facebook to make Skype products and services available on Facebook platforms.
     
  • Valeant Pharmaceuticals International, in its $2.6 billion acquisition of Medicis Pharmaceutical.
     
  • VeriFone Systems, in its acquisition of Hypercom for approximately $485 million.
     
  • Wells Fargo Securities, in connection with the transfer of Citadel Securities’ investment banking business to Wells Fargo Securities for an undisclosed amount.
     
  • AIG, Barclays, BGP, Commerce Bancorp, Fiat, Goldman Sachs, ING, IPC Holdings, Ontario Teachers’ Pension Plan, Rio Tinto, Wachovia and others, in the intellectual property aspects of their M&A, divestiture and securities transactions.

 
 
Articles Authored by Lawyers at this office:

Supreme Court Addresses Fee Shifting in Patent Infringement Cases: In Pair of Rulings, the Supreme Court Relaxes the Federal Circuit Standard for When District Courts May Award Fees in Patent Infringement Cases and Limits Appellate Review of Those Awards
, May 08, 2014
On April 29, the Supreme Court issued two unanimous opinions that: (1) give federal district courts broad authority to award attorneys’ fees in patent infringement cases and (2) limit appellate review of those awards. Section 285 of the Patent Act provides that attorneys’ fees may be...

Federal Circuit Upholds De Novo Standard of Review for Claim Construction: En Banc Majority Holds that Claim Construction Will Continue to Receive De Novo Review on Appeal, Maintaining Current Law
, February 26, 2014
In Lighting Ballast Control LLC v. Philips Electronics North America Corp., the Court of Appeals for the Federal Circuit upheld, en banc, current law under which all aspects of claim construction - the determination of the meaning and scope of patent claims and claim terms - are questions of law...

Patent Infringement and Declaratory Judgment: U.S. Supreme Court Holds That a Patentee Has the Burden of Proving Infringement in a Declaratory Judgment Action Brought by a Licensee
, January 31, 2014
The U.S. Supreme Court has issued its first in a series of important patent decisions this Term. In Medtronic, Inc. v. Mirowski Family Ventures, LLC, No. 12-1128 (January 22, 2014), the Court unanimously reversed the Court of Appeals for the Federal Circuit, and held that when a licensee seeks a...

Federal Circuit Clarifies “Nexus” Requirement for Permanently Enjoining Patent Infringement: The Court of Appeals Vacates the District Court’s Denial of Apple’s Request for a Permanent Injunction Against Samsung With Respect to Smartphone/Tablet Utility Patents and Remands for Further Proceedings
, November 22, 2013
On November 18, 2013, in Apple Inc. v. Samsung Electronics Co., Ltd., the Court of Appeals for the Federal Circuit vacated the denial by the District Court for the Northern District of California of Apple’s request for injunctive relief against Samsung’s infringement of several utility...

Hart-Scott-Rodino Act: Federal Trade Commission Amends HSR Act Rules Applicable to Transfers of Exclusive Patent Rights in the Pharmaceutical Industry
, November 12, 2013
The Federal Trade Commission (“FTC”) has amended the rules promulgated under the Hart-Scott-Rodino Antitrust Improvements Act of 1976 (“HSR Act Rules”) to provide “clarity and consistency” to the determination of whether a transfer of rights to a patent, o r part...