Software

Protecting and Defending Innovation


Blank Rome’s software industry group is comprised of attorneys and intellectual property professionals who have a deep understanding of the critical global issues challenging the software industry today, and have extensive experience dealing with a wide range of software, hardware, and system technologies.

Our clients range from start-ups to multinational companies, from niche developers to leading providers of enterprise software. We protect their intellectual capital and provide guidance with respect to licensing, business methods, data security, databases, open-source software, patents, trade secrets, copyright protection, branding, design, hardware, and software applications.

From business development and expansion to litigation, we have helped our clients by:

  • 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, as well as 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.

Recent Representations:

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.

Litigation

  • 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.
  • National litigation counsel for 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.
  • Successfully defended 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.
  • Successfully defended a litigation challenging a casino company’s use of proprietary marketing and player development software.
  • Successfully resolved a multimillion dollar software dispute for a minimal amount following an aggressive discovery and counterclaims in federal court.
  • 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.
  • Defended a market pioneer in the development and deployment of web-based substitute fulfillment systems in a patent infringement action initiated by a competitor.
  • Obtained a fraud verdict against a derivatives trading website, upheld as nondischargeable debt in federal bankruptcy proceedings, which was affirmed on appeal.
  • Patent litigation in federal courts and prosecution before patent offices in the United States and abroad, involving, among other things, the Internet, software, biomedical, information technology, RFID technology, telecommunications, and the electrical and mechanical arts.