Software

Overview

Regulators and government authorities are keeping a close eye on developments in the technology and software industry and the way business continues to evolve. Often regulations and laws don’t move at the same speed as the industry, resulting in confusion and uncertainty. Businesses need counsel who keeps pace with the changes taking place to help them thrive in this complex environment.

Our software industry team includes attorneys and IP professionals who have a deep understanding of critical global issues challenging the software industry today. We have extensive experience dealing with a wide range of software, hardware, and system technologies and know the unique difficulties our clients face.

From start-ups to multinational companies, from niche developers to leading enterprise software providers, we identify our clients’ needs and strategic objectives in order to help them achieve their business goals. We protect their intellectual capital and provide guidance with respect to licensing, business methods, data security, databases, open-source software, patents, trade secrets, branding, design, hardware, and software applications. We also negotiate transactions that help monetize their intellectual assets and defend them when infringements occur.

How We Can Help

  • structuring and executing project management methodologies for large-scale development and implementation projects
  • preparing and negotiating software, technology, copyright, patent, trademark, and other intellectual property licenses and agreements, including: 
    • development, design implementation, integration, hosting, software as a service (“SaaS”), platform as a service (“PaaS”), infrastructure as a service (“IaaS”), and other cloud-related agreements
    • underpinning maintenance and support, service level, disaster recovery, and source code escrow agreements
  • transferring and monetizing technology, including outsourcing, OEM, VAR, resale, private-label, supply, manufacturing, fulfillment, and other sourcing and distribution agreements and models;
  • assisting with website and app development and maximization, including targeted and behavioral advertising, collection and use of user generated content, as well as development, design, and hosting agreements;
  • preparation and negotiation of data supply and license agreements, as well as related security and privacy issues for collection, use, licensing, and sale of aggregate and personally identifiable information;
  • providing due diligence and transactional counseling for the acquisition and sale of public and private entities with respect to intellectual property and other intangible assets;
  • creation, administration, and registration and bonding of sweepstakes, contests, and other promotions, including rule preparation, liability releases, review of advertising and marketing materials, and response to regulatory inquiries;
  • structuring and restructuring companies;
  • resolving disputes though mediation and litigation;
  • recovering stolen trade secrets and confidential information;
  • enforcing protective orders;
  • resolving executive compensation and employment issues; and
  • securing finance.

Experience

Transactions

  • Represented a publicly held U.S.-based software and IT services company in its merger (publicly announced and later terminated) with a publicly held Canada-based software company ($1.1 billion).
  • Represented a provider of software systems and processing services and solutions in the acquisition of more than 30 companies (public and private) over a seven-year period with an aggregate transaction value in excess of $2 billion.
  • Represented a software services company in its sale to a New York-based private equity fund for more than $100 million.
  • Assisted an international finance company with a $120 million, multi-year, worldwide software initiative. Negotiated agreements, amendments, and statements of work with multiple vendors for the development, implementation, and integration of the back-end, middleware, and front-end systems, as well as the migration of legacy data to a newly developed data warehouse. Assisted with the evaluation of project development methodologies and strategies for a source code escrow and options to purchase the software.
  • Represented a publicly held U.S.-based software and IT services company in its acquisition of a privately held U.S.-based software and IT services company with significant research and development operations in Russia and the Czech Republic ($185 million).
  • Represented a publicly held U.S.-based software and IT services company in its review of expansion opportunities in China, Malaysia, Thailand, Mexico, Morocco, Egypt, Poland, Czech Republic, and South Africa.
  • Represented a publicly held U.S.-based software and IT services company in a mediation proceeding in Melbourne, Australia, relating to a dispute with a local distributor.
  • Represented a publicly held U.S.-based software and IT services company in its establishment of branch offices or wholly-owned subsidiaries in China, Mexico, India, Sweden, Luxembourg, Spain, and Italy.
  • Negotiated a purchase agreement for a $2.05 million software system, with attention to a complex chain of title issues and liquidating the seller by drafting triggers for a refund of the purchase price and discounts for implementation issues.
  • Counseled a gaming equipment manufacturer in a licensing agreement regarding software and games for Internet gaming and social media use.
  • Represented a software systems and processing solutions company in the acquisition of several companies and the sale of a business unit.
  • Advised a venture capital firm in its investment in a software company that builds hosted desktop connection brokering tools.
  • Negotiated and documented a complex software development, customization, and implementation agreement between an international software company and an international financial institution.
  • Represented a publicly held software and IT services company in its acquisition of another publicly held software company ($24 million).
  • Provided IP and corporate structuring assistance relating to a smart phone app developed by our client.

Intellectual Property

Patents
  • Handle all of the patent work for CTI Group, Inc., a premier worldwide provider of next-generation telecommunications billing and analysis software solutions for telecommunications service providers and their corporate customers. Blank Rome has filed suit on behalf of CTI Group, Inc. in numerous infringement actions (notably against large telecom companies), and obtained multimillion dollar settlements involving its patented billing analysis system.
  • Serve as IP counsel to Amphenol Corporation, a global manufacturer of electrical connectors for communications, industrial, medical, and military markets. We have handled all of the patent prosecution and litigation work for this Fortune 1000 company.
  • Represented SunGard Data Systems, a leading international software and technology services company, for almost 30 years, including as overall IP counsel and handling the negotiation and documentation of dozens of sophisticated application outsourcing, software licensing, software development, availability services, and other outsourcing and technology agreements.
  • Designed and implemented SDI Health (now IMS Health), a privately-held healthcare market insights and analytics firm that provided patient and specialty analytics from various channels, including hospitals, providers, and pharmacies. SDI’s technologies resolved privacy challenges faced by analytics, a program to identify and protect its important IP assets which led to a successful acquisition by IMS Health.
  • Serve as patent prosecution counsel to MEDecision, a leading provider of population health management technology and services for healthcare organizations.
Trademarks and Copyrights
  • Manage the worldwide trademark portfolio of Infor Global Solutions, one of the world's largest business software providers, which has over one thousand trademark files.
  • Manage the worldwide trademark portfolio of Accuweather, American media company that provides commercial weather forecasting services worldwide.
  • Manage the trademark portfolio of Verisign, Inc., the global leader in domain names and Internet security.
  • Provide trademark advice and counsel to Cambridge Advisory Group, an actuarial and benefits business consulting firm.
Licensing and Transactions
  • Represented one of the world’s largest software providers in connection with the acquisition of over 2,600 copyright registrations as part of a $1.7 billion acquisition and resecuritization of assets.
  • Drafted and reviewed exclusive and non-exclusive patent licenses on behalf of patent holders involving electrical, software, medical, Internet, and other inventions.
  • Drafted and reviewed exclusive and non-exclusive copyright, trademark, consulting, and other intellectual property agreements representing licensors, licensees, and consultants in transactions involving hardware, software, telecommunications networks, trademarks, Internet, e-Commerce, software development, online services, joint ventures, and co-development projects in the United States and with overseas entities.

Litigation

  • Represented CTI Group, a software and billing, customer care, and telemanagement services company, in the prosecution of a series of software patent infringement cases, reaching $50 million in favorable settlements.
  • Represented iCad, Inc., a developer of computer-aided detection software for mammography applications, in a vigorously contested patent infringement action involving CAD analysis, user interface, and display for mammography systems. The case settled before trial, with a very favorable result for the client.
  • Defended Verisign, Inc., a major Internet security company in a patent infringement lawsuit involving a two-factor authentication. Obtained a summary judgment of non-infringement later affirmed by the Federal Circuit Court of Appeals.
  • Served as national litigation counsel for Sage Software, an international software developer, in a copyright dispute regarding ownership rights in computer source code and various contractual disputes arising out of software licensing agreements.
  • Defended one of the largest independent CD-ROM software developers, publishers, and distributors specializing in the licensing of educational and family entertainment software in a federal copyright infringement litigation.
  • Defended a market pioneer in the development and deployment of web-based substitute fulfillment systems in a patent infringement action initiated by a competitor.
  • Assisted in federal copyright infringement litigation alleging copying of computer software for a professional healthcare provider.
  • Obtained a permanent injunction securing intellectual property rights in the misappropriation of a trade secrets action arising from a software implementation and customization project, followed by a contempt order for violations of the injunction.
  • Secured a defense verdict on behalf of a travel services company in a software patent infringement action where the plaintiff sought in excess of $10 million.
  • Obtained a fraud verdict against a derivatives trading website, upheld as non-dischargeable debt in federal bankruptcy proceedings, which was affirmed on appeal.

Team

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