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Information Technology

Overview

Smith Anderson's Information Technology (IT) team is comprised of attorneys who are highly experienced in technology-centric business transactions, litigation, patent preparation and prosecution, and licensing in the ever-evolving IT landscape. When legal issues are shaped by complex technical factors, our team has the technical aptitude to understand virtually any existing or leading-edge information technology. Team members possess technical backgrounds and degrees in electrical engineering, mechanical engineering and mathematics enabling a deep understanding of our clients’ business goals.

Across an array of industries, our team helps businesses develop, commercialize and protect company value, and identify possible risks associated with their intellectual property assets. We regularly counsel our clients with strategic business model analysis, technology development (alone or in conjunction with collaboration partner companies), intellectual property protection, technology collaborations and commercial transactions. Lawyers in our litigation practice also can enforce and defend various IP claims, including high-stakes or high-tech matters.

Additionally, we assist companies with improving business execution by procuring products or services from third parties, using traditional licensing models as well as Software as a Service (SaaS), Platform as a Service (PaaS), and similar “as a Service” cloud computing models. While cloud-based service models are popular for their advantageous initial cost, utility billing, and scalability, we help our clients understand, mitigate, and appropriately allocate risks inherent in the cloud, such as: system outages, performance problems, data loss or corruption, exit rights, migration support and the risks arising from the collection and remote storage of trade secrets, competitively sensitive, and personally identifiable information.

Our IT team also has extensive experience with distributor, reseller and sales representation arrangements, and strategic acquisitions and divestitures of IT assets through licensing arrangements or M&A transactions. We have broad experience drafting and negotiating agreements for information technology-related services to reduce disputes between customers and vendors related to scope, quality, and cost of services.

As the largest business and litigation law firm headquartered in the world renowned Research Triangle region of North Carolina, our IT attorneys have the flexibility to draw on our firm’s substantial depth of legal offerings when needed to assist our clients in other areas. Our work at the intersection of intellectual property, technology and data use, privacy and security, coupled with learning our clients’ businesses, equips us to serve as trusted advisors for facilitating our clients’ strategic business objectives and related compliance with numerous laws and regulations governing advertising, copyright, trademark, data privacy, consumer rights, data security, and online contracting.

Services

Services

Patents and Trademarks

  • Domestic and international patent and trademark preparation and prosecution
  • Patent opinions and investigations

M&A Due Diligence

  • Verify ownership and identify encumbrances or liabilities on registered IP
  • Assess patent quality
  • Review and analyze in-licenses of third-party IP

Technology Agreement Preparation

  • Software licenses, maintenance agreements and source code escrow agreements for mission critical IT projects for both IT vendors and their customers
  • SaaS, PaaS, Hosting as a Service (HaaS) and Infrastructure as a Service (IaaS) subscription agreements, Service Level Agreements and other IT outsourcing agreements
  • Distribution agreements (distributors, VAR, OEM, strategic alliances, certified partner, referral, sales agency or representation arrangements)
  • Internet and eCommerce-related agreements (website terms of use, privacy policies, electronic contracting)
  • Supply agreements for IT equipment and computer hardware
  • Content licensing and information services and technology agreements
  • Data access, exchange and licensing
  • Joint development, sponsored and/or university research agreements
  • Services agreements for website development, redesign and brand refreshment

IP Portfolio Management

  • Analyze patent portfolios and other IP assets
  • Develop IP strategies for growth
  • Procure domestic and international patents

Litigation and Post-Grant Proceedings

  • Enforce and defend various IP claims in domestic and international courts
  • Patent opposition and post-grant proceedings, including ex parte reexamination and America Invents Act (AIA) proceedings such as inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review
  • Trademark opposition and cancellation proceedings
  • Patent, trademark and copyright infringement litigation
  • Draft petitions, identify petition weaknesses and craft arguments for patentability, when representing patent owners

Areas Represented

Areas Represented

  • Video game and entertainment
  • Health information technology
  • Blockchain
  • E-commerce and new media
  • Internet-of –Things (IOT)
  • Machine learning
  • Neural networks
  • Personalization
  • IT and outsourcing services including cloud migration
  • IT equipment and computer hardware manufacturers
  • Software application developers, including internet and mobile apps
  • Big data and data analytics providers
  • Vehicle-to-Everything (V2X) communications
  • Semiconductor manufacturers
  • Non-IT companies procuring mission-critical IT assets and services
  • Artificial intelligence
  • Augmented reality and virtual reality
  • Payment systems

Experience

Representative Experience

  • Advised a leading video game company in the sale of a game franchise to a global computer software company and assisted in the development of an innovative licensing model for the client's video game development software
  • Served as lead counsel for an accountable care organization (ACO) to model and operationalize a health information exchange accessible by thousands of healthcare stakeholders, including health systems and laboratories
  • Represented a public telecommunications company in a global R&D outsourcing arrangement for the development of several telecommunications technology product lines and the provision of related services and provided related strategic counseling on IP development and ownership issues
  • Served as lead counsel for a publicly-traded health information technology company in several mission-critical outsourcing arrangements to enhance its technology infrastructure and market offerings
  • Represented a software development and data analytics company in collaborative development agreements related to platform software solutions and licensing of algorithm and data processing technologies for the agriculture industry
  • Represented a leading fuel pump supplier in establishing a technology, sales and service partnership with a leading payment system supplier to develop next-generation payment and media technologies for the retail petroleum industry
  • Represented a leading provider of wireless transmission systems in its divestiture of an integrated communications network management software platform and related assets to a network management software company
  • Assisted a leading bioanalytical company in drafting and negotiation of a $460,000 license of laboratory information management system software to support clinical trials
  • Assisted a leading public building supply distributor regarding replacement of its paper-based contracts with an electronic contracting platform enforceable under the Electronic Signatures in Global and National Commerce Act and the Uniform Electronic Transactions Act
  • Represented a leading private company provider of pharmaceutical product access support services in its acquisition by a private equity fund in a $206 million reverse triangular merger
  • Assisted a leading corporate travel management firm in the U.S. with drafting and negotiation of a services agreement with a creative consulting firm for a brand identity refresh and related website redesign and development services
  • Assisted a leading bioanalytical company in drafting a form of data access agreement for use in making protected healthcare information available through an Internet portal to firms authorized by patients to access such information
  • Assisted an e-commerce vendor in developing terms of use, privacy policy and consignment and sale agreements for use in an online business
  • Represented a leading provider of information management and data migration services in the negotiation and preparation of a collaboration and distribution agreement with a leading vendor of enterprise content management software, involving the combination of technologies to establish a best-of-breed offering that manages and migrates large volumes of data across an enterprise
  • Conducted training sessions for the legal department of one of the world’s largest software and technology service providers, providing negotiation and risk allocation strategies for the company’s technology license and services arrangements, covering complex indemnity provisions, license provisions and related risk allocation issues

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