Technology

Overview


Wendel Rosen’s technology practice group provides a full range of legal services focused on the special needs of technology companies, whose business operations are often highly time-sensitive and touch upon many areas of law.  Technology company legal issues may involve intellectual property, venture finance, stock issuance, commercial contracts, tax issues, leasing, executive compensation, estate planning and litigation.  The technology group handles the following types of matters:

  • Software Licensing, Development and Distribution
  • Trademark Selection, Registration and Protection
  • Trade Secrets
  • OEM, End-User License, Reseller and Distributor Agreements
  • Copyright Law
  • Strategic Partnerships and Joint Ventures
  • Venture Capital, Equity and Debt Financing
  • Company Formation and Stock Incentive Plans
  • Mergers and Acquisitions
  • Employment Agreements
  • Litigation to Enforce Intellectual Property Rights
  • Manufacturing Agreements


We've worked with clients in industries including software, Internet, multimedia, telecommunications, laser, medical instrumentation and computer equipment.  A major part of our work for these clients involves intellectual property; the development, protection, acquisition, licensing and disposition of trade secrets, copyrighted material, ideas, processes and trademarks.  We prepare and negotiate software, hardware and multimedia development agreements, software licenses, distribution agreements, equipment procurement agreements and joint venture agreements.  The parties to these agreements are typically developers, manufacturers, service providers, distributors, resellers and end users.  We also perform trademark searches and registrations, and advise clients regarding the selection and enforcement of trademarks. 

An important part of the technology practice group involves the financing of emerging companies.  The firm represents venture capital companies, businesses seeking financing, and financial intermediaries.  The firm’s technology clients obtain financing from founders, “angel investors,” venture capitalists, the public market and strategic partners.  We prepare investment agreements, shareholder agreements and private placement memoranda, and advise clients about preferred stock terms and registration rights for public offerings. 

Firm attorneys also perform intellectual property audits on behalf of client companies and investors in order to verify a company’s intellectual property portfolio.

The technology practice works closely with lawyers from other practice areas within Wendel Rosen.  For example, our employment law attorneys create incentive plans for managers and represent both employers and employees in complex employment disputes.  Our real estate attorneys address special issues relating to real property, such as the communication needs of Internet service providers and the installation of telecom equipment.  Our estate planning attorneys help founders and key managers of growing companies plan for liquidity events and the transfer of assets to heirs and charitable foundations.  Our tax lawyers handle the tax aspects of technology company operations.  Finally, our bankruptcy attorneys represent licensors and owners of technology, investors, lenders and others in company insolvency or creditor situations. 

We strive to fashion clear agreements that will help our clients avoid litigation.  And, when disputes arise, we seek to resolve them by negotiation or alternative dispute resolution procedures, such as mediation.  However, we recognize that litigation, or the threat of it, is a fact of business life. The firm’s litigators are experienced in a wide range of business disputes: shareholders, financing, intellectual property, commercial contracts, real estate and other areas.  Sometimes, the best way to avoid litigation is to be well prepared to handle it.  While focusing on intellectual property and corporate finance, the technology practice group brings together attorneys from the other relevant firm practice areas to address the complex needs of technology companies in a timely and responsive manner. 


Experience
  • Lead-authored amicus curiae brief filed by major Taiwan and U.S. wi-fi manufacturers (and joined by Microsoft Corporation) in the U.S. Court of Appeals for the Federal Circuit in a closely watched patent infringement case.*

  • Represented a software company providing customer data integration and master data management services in its $48 million acquisition by a public company that compiles, manages and provides business information to investors*

  • Represented a sub-licensor of 900 MHz radio spectrum in action against a major wireless carrier for breach of operation and management agreement. Case settled weeks before trial for seven figures.*

  • Prosecuted fraud action against ASIC manufacturer resulting in eve of trial settlement of $7.1 million in Accton v. Micro Linear in California state court.*

  • Engaged as tax and corporate counsel for a privately-held U.S. corporation involved in the manufacture and international distribution of high-end audio equipment in connection with its acquisition by an Italian joint stock corporation and a private equity fund incorporated in Italy. The transaction was structured to qualify for an exception to the general rule of §367(a) of the Internal Revenue Code which requires gain recognition in the case of certain transfers of stock in a U.S. corporation by a U.S. person to a foreign corporation.

  • Represented a semiconductor company in its $58 million acquisition by a private equity firm*

  • Represented a software services company in the acquisition of one of its European subsidiaries*

  • Represented a large multinational developer of networking equipment in its acquisition of a subsidiary of a large telecommunications company*

  • Prosecuted fraud action against PC board component manufacturer resulting in eve of trial settlement of $2.6 million in Accton v. Pulse Electronics in California state court.*

  • Obtained insurance coverage for a lawsuit against an international Internet-based company after coverage was initially denied

  • Successfully represented in lawsuit by a startup software company against prominent Silicon Valley company for violating trade secrets and software license agreement.

  • Represent leading pre-visualization and technology company in intellectual property, licensing, and corporate matters.

  • Advise social gaming company in various intellectual property matters and disputes, including trademark prosecution, TTAB proceedings and copyright counseling.

  • Draft and negotiate license agreements (SLA, Saas, ASP) for leading GIS mapping and technology provider.

  • Advised client on privacy issues and policies for website and customers' websites; negotiated licensing agreement regarding use of large business information database.

  • Represented software developer company against preeminent networking company in a trade secret misappropriation and violation of licensing agreement dispute involving our client's source code.

  • Represented medical laser device company in trademark infringement action in federal district court.

  • Represented national retailer in bringing complex commercial contract claim against a major software company related to shortcomings of customized computer software, resulting in early multi-million dollar settlement.*

  • Secured dismissal with prejudice of suit against manufacturer of billing software alleging non-infringement of the manufacture’s patents and damages based on the manufacturers assertion of patent rights.*

  • Prevailed in a bench trial regarding various individuals’ rights to ownership of a mobile application company, resulting in multi-million dollar judgment in favor of individual client*

  • Represented founders of a technology company in bringing suit against attorneys who purported to represent them in forming the company, then destroyed the company’s value by attempting to obtain more stock in the company for themselves*

  • Represented law firm in malpractice action alleging that the firm fraudulently advised a company to pursue patent litigation against major U.S. technology companies.*

  • Represented prominent national law firm in a legal malpractice action arising out of a failed merger between two technology companies.*

  • Represented a database software company in a Chapter 11 Debtor case involving $4.1 million in unsecured debt. Company was recapitalized by a new investor group as a going concern via confirmed Chapter 11 Plan, which restructured bank debt, revised contract and lease terms and provided for a distribution to creditors and the satisfaction of claims.*

  • Represented an insurance services and claims software company in a Chapter 11 Debtor case involving $3 million in secured debt and $11 million in unsecured debt. Company was recapitalized by existing investor/lender group as a going concern via confirmed Chapter 11, which restructured bank debt, revised contract and lease terms and provided for a distribution to creditors and the satisfaction of claims. Plan was fully implemented within 180 days of petition date.*

  • Represented a VOIP service developer and provider in a Chapter 11 debtor case involving $4 million in secured debt and $6 million in unsecured debt. Company recapitalized by existing investor/lender group as a going concern via confirmed Chapter 11 Plan, which restructured bank debt, revised contract and lease terms and provided for a distribution to creditors and the satisfaction of claims.*

  • Represented a database software company with $2 million in secured debt and $3.5 million in unsecured debt in a Chapter 11 case. Company was recapitalized by a new investor group as a going concern via confirmed Chapter 11 Plan, which restructured bank debt, revised contract and lease terms and provided for a distribution to creditors and the satisfaction of claims.*

  • Represented computer manufacturer in Chapter 11 case. Company was recapitalized by a new investor group as a going concern via confirmed Chapter 11 Plan, which restructured bank debt, revised contract and lease terms, and provided for a distribution to creditors and the satisfaction of claims.*

  • Represented an international logistic services and computer product assembly company in a Chapter 11 case involving $9 million in secured debt and $21 million in unsecured debt. Business segments sold during Chapter 11 case via Sale orders, liquidation of remaining assets done by a Chapter 7 trustee.*

* Work performed by a Wendel Rosen attorney while at a prior firm.

Attorneys
  • Balderama, Karen J.
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  • Brodehl, Kevin R.
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  • Clifford, Anagha Dandekar
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  • Cohen, Joshua D.
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  • Green, Tracy
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  • Horst, Jason M.
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  • Kao, Katherine
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  • Lyons, Richard A.
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  • Pak, Eugene M.
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  • Tang, Jennifer P.
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