McDermott Will & Schulte, a global law firm

As you develop, acquire, integrate, and commercialize technology, we guide you through the complex issues that arise throughout the technology lifecycle, including:

• Innovation, product development, and commercialization
• Technology transactions, strategic partnerships, outsourcing, and M&A
• Software, SaaS, intellectual property, and licensing agreements
• Cloud, AI, digital platforms, and connected technologies
• Data privacy, cybersecurity, FinTech, and regulatory compliance
• Governance, disputes, investigations, and incident response

Our lawyers advise on high-value domestic and cross-border transactions. We have structured, negotiated, and closed billions of dollars in technology transactions worldwide, including M&A deals, strategic partnerships, outsourcing arrangements, SaaS and cloud agreements, technology licensing, and inbound and outbound intellectual property transactions.

As your use of data, AI, and digital platforms expands, we help you navigate the evolving privacy, cybersecurity, and regulatory challenges surrounding the implementation, management, and scaling of digital infrastructure. From AI and generative AI systems to cloud computing, IoT, robotics, and FinTech, we help you address the operational and compliance challenges associated with modern technologies.

When disputes, investigations, or cyber incidents arise, we help mitigate disruption to your business. Our team advises you on complex disputes involving technology transactions, intellectual property, data privacy, cybersecurity, outsourcing relationships, digital platforms, and regulatory compliance.

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• MasterCard with the acquisition of C-SAM, Inc., a leading provider of mobile wallet and on-device software and services

Cloud computing

• Citrix Systems in transactional and patent litigation services ranging from server, client and network delivery of cloud-based applications and end-user experience management, and including the successful defense of Citrix in a five-patent infringement suit related to fundamental aspects of web-based conferencing involving Citrix’ Go-to-Meeting® and Go-to-Webinar® products (Pixion, Inc. v. Citrix Systems, Inc. (N.D. Cal.))
• Spirit AeroSystems in SaaS cloud computing agreements and other technology matters
• Numerous companies acquiring cloud-based solutions, including Microsoft, Amazon, Salesforce.com, Google, NetSuite, Rackspace, VMware, and SoftLayer
• HomeServices, a Berkshire Hathaway-owned mortgage loan processing company, in a cloud-based loan application platform license with Ellie Mae
• Harris Corporation in its joint venture to develop cloud computing-based medical image management solutions with Johns Hopkins Medicine

Outsourcing

• Mitsubishi Heavy Industries in its BPO transaction with Genpact that resulted in a captive organization providing various finance and accounting services to Mitsubishi’s various subsidiaries around the world
• CoreLogic in a BPO transaction with TCS, whereby TCS will provide data entry, verification and reporting services
• Sprint Corporation with a finance and accounting (accounts payable) BPO deal with ACS, and a call center transaction with IBM
• Neiman Marcus Group in the negotiation of a benefits administration outsourcing agreement for 401(k) management with Fidelity Investments
• Assurant, a Fortune 275 insurance company, in a business process outsourcing agreement for cash management and general ledger services with EXL Technologies

Technology & commercial transactions

• Sprint Corporation in its acquisition of next-generation wireless infrastructure equipment used to upgrade its nationwide wireless network
• Vinli in an M2M wireless data deal with T-Mobile to provide wireless services to the Vinli OBD II device enabling vehicles to become a “connected car”
• A software company in its agreement with Intel to provide wireless connection management services for Intel’s next-generation mobile chipset to be utilized in smartphones, tablet PCs, netbooks and other mobile devices
• Spirit AeroSystems in SaaS cloud computing agreements and other technology transactions matters
• BBVA Compass Bank in a software development transaction with Accenture
• Proctor & Gamble Company in its agreements with Teva Pharmaceutical Industries to create a partnership in consumer health care
• Micron Technology in the formation of IM Flash Technologies, a $5.2 billion joint venture with Intel Corporation
• Finnair in a procurement process whereby Finnair purchased equipment and services to enable Wi-Fi internet across its entire fleet of aircrafts

Telecommunciations, Media & Technology

• Sprint Corporation in its acquisition of next generation wireless infrastructure equipment used to upgrade its nationwide wireless network
• Vinli in an M2M wireless data deal with T-Mobile to provide wireless services to the Vinli OBD II device enabling vehicles to become a “connected car”
• A software company in its agreement with Intel to provide wireless connection management services for Intel’s next-generation mobile chipset to be utilized in smartphones, tablet PCs, netbooks and other mobile devices
• Spirit AeroSystems in SaaS cloud computing agreements and other technology transactions matters
• BBVA Compass Bank in a software development transaction with Accenture
• Proctor & Gamble Company in its agreements with Teva Pharmaceutical Industries to create a partnership in consumer health care
• Micron Technology in the formation of IM Flash Technologies, a $5.2 billion joint venture with Intel Corporation
• Finnair in a procurement process whereby Finnair purchased equipment and services to enable Wi-Fi internet across its entire fleet of aircrafts

Technology Intellectual Property

• BlackBerry in several patent infringement cases, including:
  • A complete victory for the client following a two-week trial involving a three-patent suit, which resulted in the jury finding all three patents not infringed and invalid. NXP B.V. v. BlackBerry Limited, et al., Case No. 6-12-cv-00498 (Middle District of Florida).
  • A successful defense where the case settled favorably for our client the evening before closing arguments. Innovative Sonic Ltd. v. BlackBerry (f/k/a Research In Motion Ltd) et al., Case No. 6-10-cv-00455 (Northern District of Texas).
• Brocade, Citrix and Barracuda against Parallel Networks, a non-practicing entity, in patent infringement lawsuits related to web-caching technology, in the District Court of Delaware. We forced Parallel to dismiss all claims with prejudice and with no payment by our clients. Parallel Networks, LLC v. Barracuda Networks, Inc., Case No. 1-13-cv-01412; Parallel Networks, LLC v. Brocade Communications Systems, Inc., Case No. 1-13-cv-01413; Parallel Networks, LLC v. Citrix Systems, Inc., Case No.1-13-cv-01414.
• Panasonic in successful outcomes of multiple matters, including:
  • A favorable settlement for Panasonic and Nintendo in an International Trade Commission (ITC) investigation instituted by non-practicing entity, Optical Devices LLC. Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (USITC 337-TA-897).
  • A victory in an ITC investigation involving Black Hills Media and accusations of infringing five US patents. In the matter of Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (USITC 337-TA-882)
• Seagate Technology in achieving a full summary judgment victory. Convolve and the Massachusetts Institute of Technology sued Seagate and its customer, Compaq Computer Corporation. Convolve asserted misappropriation of no less than 57 trade secrets, infringement of three patents, breach of a nondisclosure agreement and various other business torts, seeking damages in excess of a billion dollars. Convolve, Inc. v. Compaq Computer Corp., No. 00-cv-5141-GBD-JCF (Southern District of New York). This case prompted the landmark Federal Circuit decision, In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), which overturned 24 years of precedent in Seagate’s favor, abolishing the duty of care standard for willful infringement.
• Brocade Communications in securing a $112 million judgment from a patent, copyright and trade secret infringement action. The case involved 13 patents on load balancing and high-availability of networking devices, as well as trade secrets and copyright claims. After a three-week trial, the jury returned a unanimous verdict. Following trial, the court issued permanent injunctions barring A10 from making, using or selling devices that infringed Brocade’s patents and trade secrets. Brocade v. A10 Networks, Case No. 5-10-cv-03428-PSG (Northern District of California).
• Blackboard, a leading educational technology company, in successfully resolving multiple patent infringement cases, including:
  • A qui tam false patent marking action in which the North Texas Patent Group sued Blackboard alleging its products were marked with a patent whose independent claims had previously been held invalid and because it was marking a software product with method claims. The court ultimately agreed with Blackboard’s position on every issue and rejected the plaintiff’s theories. North Texas Patent Group, Inc. v. Blackboard, Inc., Case No. 1-10-cv-06161.
  • Infringement allegations of two patents related to online conferencing and collaboration. The court’s ruling left Spatium with only two of the 39 patent claims it asserted originally. The remaining claims were dismissed with prejudice, with no payment by our client. Spatium Innovations LLC v. Blackboard Inc., Case No. 1-14-cv-00218 (Eastern District of Virginia).
• Citrix Systems and Citrix Online in a complete summary judgment victory. Pixion asserted five patents against Citrix related to fundamental aspects of web-based conferencing. The US Court of Appeals for the Federal Circuit affirmed the district court’s judgment. Pixion, Inc. v. Citrix Systems, Inc, Case No. 3-09-cv-03496 (Northern District of California).
• Diablo Technologies in a complete jury trial victory against its former development partner, Netlist, who had accused Diablo of eight counts of trade secret misappropriation, two counts of breach of contract, incorrect inventorship of Diablo’s patent and two counts of trademark infringement and false advertising under the Lanham Act. Netlist Inc. v. Diablo Technologies Inc., Case No. 13-cv-5962 YGR (Northern District of California).
• Ricoh, in a first-of-its-kind change of venue motion (granted by the presiding judge) in the Eastern District of Texas, which moved the matter to the District of Delaware. As a result of an Alice-based (Sec. 101) motion, all activity in the district court was stayed pending a decision on subject matter eligibility and a settlement was quickly reached that was several orders of magnitude less than Cyberfone’s earlier demands. Cyberfone Systems LLC v. Ricoh Americas Corporation, et al, No. 1-14-cv-01490 (District of Delaware).
• Static Control Components, a manufacturer of parts for printer toner cartridges, in the successful representation of a Lanham Act false advertising case involving claims that Lexmark made false statements about Static’s products. Static Control Components v. Lexmark International, Civil Action No. 5-04-cv-84 (Eastern District of Kentucky).

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