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Technology

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Overview

Our Clients

Katten's Technology attorneys represent both providers and users of technology. Our clients include technology innovators in the fields of electronics, biotechnology and software, including developers of proprietary technology for their firm's own use and vendors exploiting software-as-a-service, platform-as-a-service and infrastructure-as-a-service models. Our clients span a broad spectrum of industries, from financial services and insurance companies to educational institutions, real estate-related ventures, health care providers and retailers.

Our Services

Possessing a wealth of experience in technology, intellectual property, e-business, corporate and privacy-related legal matters, Katten's Technology team helps clients navigate the complex legal issues associated with all stages of development, procurement, implementation, use, monitoring and commercial exploitation of technology, and the underlying intellectual property. Together with Katten patent attorneys, we identify IP suitable for protection and advise on protection of such IP, including employee and inventor agreements, complex confidentiality arrangements that allow for disclosure but create necessary protective measures, and prosecuting patents and other registrations domestically. When clients seek our assistance in obtaining intellectual property protection abroad we work with the best firms from around the globe. We represent our technology developer clients in the licensing and distribution of their proprietary technology and IP—including creating sets of form documents such as end-user licenses, support and maintenance agreements and service-level agreements—and negotiating with sophisticated end users on complex, one-off arrangements. Our experience includes both domestic and cross-border transactions. We also represent our clients in a host of joint venture and partnering arrangements, including joint development agreements, reseller and referral agreements and original equipment manufacturer (OEM) agreements, dealing regularly with issues as varied as funding development and marketing, source code licensing, escrows, minimum advertised pricing (MAP) policies, and termination of contractual relationships.

Katten's Technology attorneys represent users of technology products and services in virtually every type of contractual arrangement, including the outsourcing of technology services and business functions, procurement transactions involving hardware, large-scale software licenses and technology services, the use of cloud-based solutions, and negotiation of software development agreements with complex bonus and penalty provisions. We bring an understanding of the importance of aligning our clients' business goals with their technology assets. Our clients regularly seek our advice with respect to the development and content of digital media including websites, the benefits and risks associated with social media, how to comply with ever-changing privacy legislation, such as the emerging standards for mobile apps, and how to take advantage of big data. Because our Technology team represents both providers of technology and their customers, we are well versed in all issues that can arise during negotiations, and can be counted on to understand what is important and what is not, what is standard and where compromises can be made.

Experience
Representation of Technology Users
  • Representation of a leading provider of direct investing services in connection with the legal aspects of its online operations, including in procuring software, professional services and support with leading providers of software solutions for the financial services industry; advising on inbound and outbound software licensing; advising on regulatory issues; drafting online customer agreements; and advising on Internet law issues.
  • Representation of a website for culinary enthusiasts in connection with all legal aspects of the development, content population and operation of a website, featuring tutorials from celebrity chefs, culinary-related features articles, a recipe database, marketing and sale of cookware and other culinary tools and culinary educational information.
  • Representation of a consortium of stock exchanges and a regulatory authority with respect to the drafting and negotiation of contracts for administrative and processor services relating to the collection and consolidated reporting of market data.
  • Representation of an insurance company in connection with a major license and consulting agreement for the license, development, integration and implementation of a new claims management system.
  • Representation of a publicly traded gaming company in connection with a platform development transaction for a new generation of casino games.
  • Representation of a large municipal health care system in connection with the negotiation and implementation of a license and services agreement to replace the client’s existing medical records system with an integrated system linking numerous health care facilities and other health care providers.
  • Representation of a nationwide for-profit hospital system in a number of technology procurement transactions, including licensing of an electronic medical records system, enterprise-wide scheduling system, cloud-based human resources system and enterprise resource planning (ERP) system.
  • Representation of a retail chain of jewelry stores in connection with outsourcing of chain’s IT infrastructure.
  • Representation of a boutique hotel management group in regard to a variety of transactions related to critical technology, including central reservation system and hotel management software, as well as an agreement for the development of websites pertaining to each hotel.
  • Representation of a managed care provider in the acquisition of software systems and outsourced services arrangements for claims management and cost containment, including systems and relationships focusing on inpatient and outpatient utilization, disease, comprehensive case, wellness and maternity management.
  • Representation of a publicly traded construction company in connection with the procurement of enterprise resource planning (ERP) system and outsourced development of custom applications.
  • Representation of a large banking institution in regard to a contract for a product by which the bank streams FX rate quotes and allows customers to submit order requests for FX transactions.
  • Representation of a leading provider of off-airport parking services regarding transactions related to key parking technology.
  • Representation of a private equity firm in connection with a joint venture for the licensing, development and commercialization of personalized medicine-related assets.
Representation of Technology Developers and Vendors
  • Representation of a social media management company in connection with the preparation of form contracts, negotiation customer contracts and provision of counseling on data use issues.
  • Counsel to a startup mobile app developer in all aspects of its business, including development contracts, licensing and privacy issues.
  • Representation of a UK-based futures exchange in connection with a joint venture for the formation of a new exchange for single stock futures through the use of a proprietary trading platform.
  • Outside general counsel to a software developer, which provides identification verification and multi-factor authentication services, in connection with the preparation of form documents and end-user licensing negotiations, including transactions with major national and international banks.
  • Representation of a major futures exchange in connection with a technology cooperation alliance with another exchange regarding trading of contracts on an electronic trading platform.
  • Negotiation of license agreements on behalf of a software developer providing safety management software with key international customers in the energy generation and distribution industry.
  • Representation of a developer of banking solutions in customer licensing transactions with large nationwide banks.
  • Representation of a pharmaceutical company in connection with several acquisitions of license rights to various pharmaceuticals.
  • Representation of a publicly traded developer of enterprise infrastructure software products in connection with more than 30 acquisitions of technology and technology companies, helping the company round out its product line.
  • Counsel to a publicly traded technology solutions and outsourcing provider in a customer dispute over outsourcing services.
  • Representation of a Latin American market infrastructure firm in negotiations with a service provider regarding electronic trading and market surveillance systems and services powering a new foreign stock exchange. 
  • Representation of a derivatives exchange in several transactions with other exchanges related to licensing of methodologies, software and other intellectual property.
  • Representation of a large banking institution in drafting a customer-facing electronic trading services agreement.
  • Representation of a large tax, consulting and accounting firm in regard to various agreements pursuant to which the firm provides third-party accounting firms software-based tools and services.
  • Representation of the leading nationwide provider of financing solutions for middle-market, private equity-backed transactions in connection with its establishment of a new information technology infrastructure, including its IT network infrastructure, hosting arrangements, outsourced help desk and numerous long-term software licensing and development contracts.
  • Representation of a privately held global leader in cloud computing solutions and strategic IT services in connection with a joint venture with a major engineering and design firm to create and market products for the public sector.
  • Representation of a provider of a broad range of network-related services with respect to its extensive suite of customer-facing contracts and service-level agreements. 
  • Representation of a European provider of payroll services in an agreement to resell payroll-related software offered by a North American entity.
Professionals
Firm News
Events
November 16, 2016
November 9, 2016
2016 ACG LA Business Conference | Pasadena, California
November 5, 2015
November 5, 2015
September 10, 2014
May 14–16, 2014
May 13, 2014
ITA Security Symposium | Chicago, Illinois
October 23, 2012
September 30, 2012
119th Annual Conference & Exposition | San Diego, California
September 12, 2012
Technology

Recognition

Managing Intellectual Property IP Stars – Patent Contentious (United States)

2017
U.S. News Best Lawyers "Best Law Firms" – Litigation – Patent (Los Angeles)
Litigation – Patent (Los Angeles), 2014–2016
Legal 500 US – Trademarks: Litigation
Trademarks: Litigation, 2016–2018
U.S. News Best Lawyers "Best Law Firms" – Litigation – Intellectual Property (National)
Litigation – Intellectual Property (National), 2014–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (New York)

2017–2018

Managing Intellectual Property Annual Awards – Trademark Contentious (Midwest Region)

2017

IAM Patent 1000

Patent Litigation, 2017

World Trademark Review 1000 – The World's Leading Trademark Professionals (National)

2017–2018

Managing Intellectual Property IP Stars – Trademark Contentious (United States)

2017
U.S. News Best Lawyers "Best Law Firms" – Litigation – Patent (National)
Litigation – Patent (National), 2014–2018
U.S. News Best Lawyers "Best Law Firms" – Litigation – Patent (Chicago)
Litigation – Patent (Chicago), 2014–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (Chicago)

2017–2018

BTI Litigation Outlook 2018

IP Litigation Honor Roll

Managing Intellectual Property IP Stars – Trademark Prosecution (United States)

2017
Chambers USA – Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC)
Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC), 2016

World Trademark Review 1000 – The World's Leading Trademark Professionals (Washington, DC)

2017–2018
U.S. News Best Lawyers "Best Law Firms" – Litigation – Intellectual Property (Chicago)
Litigation – Intellectual Property (Chicago), 2014–2018
Chambers USA – Intellectual Property (Illinois)
Intellectual Property (Illinois), 2016–2018
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Recognition

Managing Intellectual Property IP Stars – Patent Contentious (United States)

2017
Litigation – Patent (Los Angeles), 2014–2016
Trademarks: Litigation, 2016–2018
Litigation – Intellectual Property (National), 2014–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (New York)

2017–2018

Managing Intellectual Property Annual Awards – Trademark Contentious (Midwest Region)

2017

IAM Patent 1000

Patent Litigation, 2017

World Trademark Review 1000 – The World's Leading Trademark Professionals (National)

2017–2018

Managing Intellectual Property IP Stars – Trademark Contentious (United States)

2017
Litigation – Patent (National), 2014–2018
Litigation – Patent (Chicago), 2014–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (Chicago)

2017–2018

BTI Litigation Outlook 2018

IP Litigation Honor Roll

Managing Intellectual Property IP Stars – Trademark Prosecution (United States)

2017
Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC), 2016

World Trademark Review 1000 – The World's Leading Trademark Professionals (Washington, DC)

2017–2018
Litigation – Intellectual Property (Chicago), 2014–2018
Intellectual Property (Illinois), 2016–2018

OUR CLIENTS SAY...

"Katten is an excellent firm with great expertise in IP. . . . [T]his strong team is smart, dynamic, effective and highly skilled."

U.S. News – Best Lawyers®
"Best Law Firms" 2014
(Litigation - Intellectual Property)

Screen Reader Content

Our Clients Say: "Katten is an excellent firm with great experience in IP . . . . [T]his strong team is smart, dynamic, effective and highly skilled."

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