Thomas - Oakley
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Experience

Our Experience

 

Big Law in a small package

We have experience in transactions and disputes at every level of complexity. Investors in our clients have ranged from the top five tech VC firms in the country to small family loans, and everywhere between. Our clients are world experts in their industries and rely on world class legal representation.

Representative Clients and Matters

Clients

  • 10XBETA Venture Studio LLC

  • Black Mesa, Inc.

  • GenHealth, Inc.

  • iSchoolConnect, Inc.

  • LeafLabs, LLC

  • Pickle Robot Company

  • Rapid Liquid Print Co.

  • Siphox, Inc.

  • Tender Food, Inc.

 

Disputes and pre-dispute counseling

  • Counseled public university technology transactions office on IP strategy and potential patent assertions.

  • Counseled startup regarding disputed founder exit.

  • Counseled tech startup with regarding to patent enforcement against alleged infringers.

  • Led a team to favorably resolve a multi-forum, multijurisdictional patent suit against a major smartphone manufacturer, which threatened a key cloud storage service deployed on the client's products.*

  • Led patent portfolio review and analysis for a worldwide financial services and communications company and suggested approach to cut costs while maintaining valuable protection.*

  • Defended smartphone manufacturer in a patent infringement suit in the Eastern District of Texas as part of an international licensing dispute.*

  • Represented smartphone manufacturer in two Section 337 ITC investigations involving active noise cancellation technology and a wireless technology standard.*

  • Defended Taiwanese semiconductor design company in a patent infringement suit in the Northern District of California.*

  • Defended health insurance company in a lawsuit by a software vendor alleging trade secret misappropriation and breach of contract.*

  • Represented a Colorado manufacturer of noise cancelling headphones in connection with a technical and design dispute with a much larger competitor.*

*experience at prior law firms

Transactions

  • Represented startup in Series A financing with a strategic investor, including sales and services agreements, with aggregate capital raise of $26 million.

  • Represented food tech startup in $12 million VC financing.

  • Represented biotech company in $13 million VC financing.

  • Represented biotech company in $4 million VC financing.

  • Represented technology startup in partial IP asset sale and support services agreement with aggregate deal value of $6+ million.

  • Represented technology startup in exclusive licensing and services agreement with total contract value over $7 million.

  • Represented biotech company in asset sale with total deal value in excess of $6 million.

  • Co-counsel in negotiations for sale of biotech company with deal value exceeding $30 million.

  • Represented a founding member of an LLC in a million dollar buyout of membership interest.

  • Represented startup in multimillion dollar joint development and manufacturing agreement with multinational, publicly traded pharmaceutical company.

  • Represented a spinoff in contract negotiations with VC backed startup.

  • Represented VC financed startup in spinoff from technology consulting firm.

  • Represented robotics start-up in $3.5 million VC financing.

  • Represented technology start-up in $2 million VC financing.

  • Represented labor technology company in $1.5 million VC financing.

  • Represented food technology company in $1.5 million VC financing.

  • Represented clothing tech company in $2 million cross-border capital financing.

  • Regularly negotiate technology license and services agreements on behalf of startup clients with Fortune 50 companies.

  • Represented artist team in contract negotiations for half million dollar public art installation.

  • Represented client in negotiations for exclusive distribution agreement for consumer art products in certain jurisdictions in East and Southeast Asia.

  • Represented technology start-up in $5.6 million VC financing.

  • Represented 3D printing startup in $2 million VC financing.

Corporate and Strategic Counseling

  • Provide ongoing general counsel services to technology startups, including an industry leading robotics company, an advanced embedded systems consultancy, and a food technology company among others.

  • Developed and implemented a venture studio model for a medical device development group, including investment, services, and portfolio holding entities.

  • Regularly consult with founders regarding business formation, equity grants, and intellectual property requirements for technology startups.

  • Negotiate IP license agreements with university technology licensing offices, both in representation of universities and on behalf of technology startups spun out of university research labs.

  • Developed and implemented strategy for spin out of two technology startups from IP developed at a technology services company.

  • Negotiated the transfer of IP from health care information technology company to startup led by original founder.