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Overview

Intellectual property is typically among the most significant assets of a business, and Calfee’s technology transaction team prides itself on maximizing the value of those assets for its clients. Operating at the crossroads of corporate and intellectual property law, our technology transactions experts guide clients ranging from cutting-edge startups and early stage investors to large privately held and publicly traded companies and established private equity funds through the complexities of intellectual property focused commercial transactions. 

Recognizing that intellectual property and technology transactions require special expertise and care, Calfee’s team melds more than a century of deal-making experience with the specialized skill set of a broad group of highly accomplished intellectual property attorneys. Our lawyers have both the legal expertise to close the deal and the technical background and experience to understand the unique challenges in any technology field. This added insight makes all the difference in today’s technology-driven M&A market. In fact, Calfee’s team is routinely called upon to act as IP-specific deal counsel in complex transactions in a wide array of technology sectors with deals ranging in size from smaller, focused transactions to those that exceed a billion dollars in value. 

Noteworthy

Chambers USA Band 2 Ranking in Intellectual Property (Ohio) and Corporate/M&A - Ohio: North

For well over a decade, our Intellectual Property group has been ranked and recognized by Chambers USA. In 2021, Chambers USA researchers noted that the team is "Esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. Highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

A client interviewed by Chambers USA 2020 researchers was quoted saying, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost." A market commentator added, "Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients." "This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with," stated another client.

Chambers USA 2020 researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."

Firm Vice Chairman and Intellectual Property practice Co-Chair, John S. Cipolla, was ranked by Chambers USA 2021 in Band 1 for Intellectual Property (Ohio). Chambers USA researchers stated, "[John] receives notable acclaim for his broad contentious and noncontentious practice, and is particularly noted for his work in patent litigation." Clients interviewed by Chambers USA researchers remarked, "He takes difficult subjects and makes them easier to understand." Another client commented, "He's hard-working and has good judgment."

Partner and Intellectual Property practice Co-Chair, Mark W. McDougall, was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers noted, "[He] gets immersed in the facts and provides detailed guidance." Another source mentioned, "Mark is a smart patent lawyer."

Partner Raymond Rundelli was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers mentioned, "He's responsive, thorough and thoughtful." Chambers USA 2020 researchers reported, "[Ray] comes recommended as an 'excellent trademark attorney' who assists clients in an array of complex litigation and portfolio management work. His practice also extends to patent-related matters."

Partner Todd Tucker was ranked by Chambers USA 2021 in Band 3. Chambers USA researchers noted, "[Todd] takes on a range of domestic and cross-border IP disputes, including patent litigation. His experience includes matters concerning the protection of assets in China, and he regularly advises Chinese entities on US-based IP portfolios." Clients interviewed by Chambers USA researchers stated, "Todd stands out in his ability to provide practical advice from a multinational IP perspective because of his strong, unique background in patent litigation and international patent prosecution." Another client mentioned, "He helps make complex processes simple."

Additionally, for more than a decade, Calfee's Corporate and Finance practice has been ranked for Corporate/M&A - Ohio: North by Chambers USA; most recently, Calfee was ranked in Band 2 in 2021.

Chambers USA commentators noted Calfee's Corporate and Finance practice "Draws from an impressive statewide team with a strong track record across a broad range of corporate and transactional matters, acting on behalf of public and private businesses and financial institutions. Areas of excellence include M&A, securities offerings and private equity and venture capital fund formation. [Calfee also] offers notable capital markets expertise, with particular strengths in acting for underwriters." 

A source interviewed by Chambers USA researchers in 2021 said, "They consistently bring strong talent to any situation, operate in a seamless manner and remain calm even under stressful circumstances." Chambers USA also mentioned, "A client appreciates the team's 'business-oriented, practical approach.'"

U.S. News – Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2021 "Best Law Firms" rankings by U.S. News – Best Lawyers in the following areas:

  • Litigation - Intellectual Property (National Tier 3, Metropolitan Tier 1 Cleveland)
  • Patent Law (Metropolitan Tier 1 Cleveland)
  • Corporate Compliance Law (Metropolitan Tier 2 Cleveland)
  • Corporate Governance Law (Metropolitan Tier 2 Cleveland)
  • Corporate Law (National Tier 2, Metropolitan Tier 1 Cleveland, Metropolitan Tier 1 Columbus, Metropolitan Tier 2 Cincinnati)
  • Venture Capital Law (National Tier 2, Metropolitan Tier 1 Cleveland)
  • Mergers & Acquisitions Law (National Tier 3, Metropolitan Tier 1 Cleveland, Metropolitan Tier 2 Columbus) 
  • Securities/Capital Markets Law (National Tier 3, Metropolitan Tier 1 Cleveland)
  • Securities Regulation (National Tier 2, Metropolitan Tier 1 Cleveland)
  • Tax Law (Metropolitan Tier 1 Cleveland)

IFLR1000 (United States), Guide to the World's Leading Financial and Corporate Law Firms and Lawyers

Calfee was selected for inclusion in IFLR1000 – Guide to the World's Leading Financial and Corporate Law Firms from 2019-2020 in the areas of Capital Markets (Recommended – Ohio) and M&A (Tier 2 – Ohio).

Clients responding to the IFLR1000 2019 survey reported the following regarding Calfee's M&A and Capital Markets team:

  • "Calfee solves problems. They have a deep bench with complete understanding of clients' needs. They are focused, hardworking and get the job done. They are competitively priced."
  • "Calfee, Halter & Griswold consistently goes above and beyond on providing sound counsel to our company. They are extremely responsive and even work on the weekends when an acquisition is ready to close. They anticipate our needs and will suggest alternative methods for solving legal issues. We are lucky to have them represent us."
  • "Calfee is a sophisticated law firm with good depth across many practice areas. The lawyers have a strong sense of client service and are responsive to our needs."
  • "Second to none. We have used every major law firm in the market and no one has the depth of expertise and high level of service."
  • "They are excellent. I would recommend them. We have not used them significantly before this past year, and the work we used them for was M&A and IP assistance. They have been an impressive law firm to work with."
  • "Calfee is an excellent law firm. Their lawyers are extremely knowledgeable and pleasant to work with."

Professionals

Professionals

John S. Cipolla
Vice Chairman; Co-Chair, Intellectual Property
Brad  Liu
Associate; Associate Director, International Business – China

Services

Services

Calfee’s technology transactions expertise includes:

  • Technology-based M&A transactions
  • Standalone technology acquisitions, divestitures and spin outs
  • Complex Intellectual Property due diligence
  • Research and development agreements
  • Joint development agreements, joint ventures, and strategic partnership initiatives
  • Strategic technology assessments for investment funds and strategic buyers
  • Securitization of Intellectual Property in debt transactions
  • IP landscape and valuation projects
  • Adversarial and litigation-driven licensing negotiations
  • Buying and selling patent portfolios, complex licensing arrangements, and technology monetization programs
  • Technology-related manufacturing, reseller, supply and distribution agreements
  • Source code reviews and clean room projects
  • Advising clients on the use of Intellectual Property as an alternative to traditional funding
  • Negotiating complex acquisitions of brand portfolios
  • Licensing personality rights, negotiating sponsorships, and athlete and celebrity endorsements

In addition to helping clients complete these milestone events, Calfee’s team handles day-to-day counseling for large and small companies in a diverse variety of technology spaces to help them maximize the value of their IP assets in preparation for potential IP transactions. This includes:

  • Identifying and protecting proprietary information and other IP assets
  • Developing foreign and domestic nondisclosure agreements
  • Maintaining IP portfolios and records to avoid delays when potential deals arise
  • Advising clients on protecting trade secrets from disclosure and other adverse events that may undercut the value of their IP

Our attorneys focus on combining legal expertise with technical and business acumen to assist our clients in preparing for and completing technology-focused transactions efficiently to achieve optimal results.

News & Events

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"Calfee's IP group is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio, the Midwest and across the USA. They are highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

Researcher comments from the Chambers USA 2021 Guide

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