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© 2012 Dorsey & Whitney LLP

David Hayes

Partner
Southern California, Palo Alto
P: (714) 800-1423, (650) 494-8700
F: (714) 800-1499, (650) 494-8771
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Partner in the Corporate group and co-chair of the technology transactions group, Mr. Hayes’ practice includes extensive experience in advising clients in connection with intellectual property protection strategies and all aspects of life science, medical device and high technology transactions including the acquisition and protection of intellectual property, research and development transactions, acquisitions, financing as well as on the buying, selling, leasing, distribution, licensing and development of high technology products and services.

Mr. Hayes has extensive experience in advising clients in the life science and medical device businesses including in connection with intellectual property protection strategies and all aspects of industry related transactions including the acquisition of intellectual property, collaborations, research and development agreements, clinical testing, marketing and co-branding agreements, as well as on the buying, selling, distributing, licensing and development of products and services.

Mr. Hayes also has special expertise in domestic and international related transactions, distribution transactions, patent licensing transactions, research and development transactions, outsourcing and facilities management transactions, strategic alliance transactions, acquisitions involving high technology targets, biotechnology research and development transactions, co-promotion agreements, computer services transactions, domestic and international software and hardware development transactions, computer system sales and acquisitions, OEM distribution agreements, VAR agreements, technology-related professional service agreements, semiconductor supply agreements, intellectual property protection programs, system integration agreements, software and hardware maintenance agreements, disaster recovery agreements and copyright and trademark registration prosecution. His industry experience covers a wide variety of areas including life science, computer hardware, semiconductors, software and information technology and outsourcing, among others.

Prior to practicing law, Mr. Hayes was a computer programmer and software engineer for a major utility company where his responsibilities included research into various state of the art technologies in connection with the development of the company’s computer system architecture.

Representative Work

  • A major pharmaceutical – medical device company in connection with multiple joint development, collaboration and co-promotion agreements.
  • A major pharmaceutical company in connection with celebrity endorsement agreements.
  • An early stage medical device company in connection with multiple patent license agreements with a major research university.
  • An early stage medical device company in connection with various agreements with strategic partners.
  • Acting as outside general counsel for an early stage medical device company.
  • A Danish R&D venture in connection with collaboration, licensing and commercialization agreements.
  • A major German conglomerate in connection with licensing various paten portfolios.
  • A major pharmaceutical company in connection with a exclusive licensing of Phase 3 urology products.
  • A major pharmaceutical company in connection with a collaboration with a major cosmetics company.
  • A major pharmaceutical company in connection with a spin out of a major technology group.
  • A major pharmaceutical company in connection with numerous licensing and co-promotion transactions.
  • A major German cancer research institute in connection with a cancer treatment technology to a top 5 worldwide pharmaceutical company.
  • Several life sciences companies (biotech, pharma, device) in connection with all aspects of technology acquisition and commercialization including joint development agreements, acquisition and licensing of technology, co-promotion agreements and the like.
  • A major biotechnology company in connection with the spin-out of major development program to VC backed venture.
  • A major entertainment company in connection with structuring a technology based entertainment spin-off.
  • A major entertainment company in connection with its acquisition of a large scale worldwide financial data processing system.
  • A major entertainment company in connection with their purchase of an internet portal.
  • A major entertainment company in connection with obtaining exclusive rights to replicate and distribute another studio’s film library on DVD.
  • A major entertainment company in connection with multiple international agreements establishing a worldwide DVD replication network.
  • Major online retail organization in connection with various product distribution agreements.
  • A major data processing service provider in connection with the outsourcing of a major defense contractor’s nationwide data processing operations.
  • A major Canadian aerospace contractor in connection with its acquisition of a California-based developer of satellite technology.
  • A California telecommunications company in connection with a multi-million dollar hardware technology development agreement with a Canadian circuit board developer which required disclosure of key technology by the acquiring party and involved Canadian government subsidy of the developing entity.
  • A internet service provider in connection with the distribution of various affinity products.
  • A software development company in connection with the multi-tiered distribution of medical records software.
  • A semiconductor chip manufacturer in connection with the development and distribution of navigation technology products.
  • A NDAS disk drive manufacturer in connection with distribution of products to various retail distribution channels.
  • A major videogame developer in connection with the development and distribution of various titles.
  • An independent toy development company in connection with the development and distribution of various products.
  • A major wireless networking company in connection with international purchase agreements and domestic product distribution agreements.
  • General representation of a new wireless communication technology venture from start-up research and development to product production, marketing and distribution through wholesale and retail channels.
  • A major fabless semiconductor company in connection with a variety of agreements related to the sale an distribution of products.
  • A major disk drive manufacturer in connection with a strategic alliance for the marketing and distribution of newly developed technology.
  • An early stage fabless semiconductor company in connection with development and product distribution agreement with a major international cell phone manufacturer.
  • A cable television technology provider in connection with an exclusive distribution agreement for the distribution of its hardware and software in Australia and New Zealand.
  • An international industrial pump manufacturing company in connection with its acquisition of hardware, software and services related to the implementation of a worldwide computer system.
  • General representation of a major Internet access service provider in connection with the licensing and distribution of Internet access, browser and e-mail products.
  • General representation of a major internet access service provider in connection with various operational issues including employee confidentiality and invention assignment, executive employment, internet access provider liability and compliance requirements under the Communications Decency Act of 1996.
  • A Texas-based computer-assisted manufacturing software developer in connection with distribution of its software for use in the United States, France, Italy, Switzerland, Germany and Singapore.
  • A Texas-based computer-assisted manufacturing software developer in connection with OEM licensing for the distribution of its software worldwide.
  • A California-based routing and delivery planning software developer in connection with distribution of its software for use in the United States.
  • A California-based credit card security software developer in connection with a strategic alliance with a major credit card company for the development and marketing of credit card security and data services in the United States.
  • A national computer maintenance service provider in connection with the outsourcing of the repair of all of its hardware components.
  • A California-based federal savings bank in connection with the outsourcing of its data processing operations to an Arkansas-based national service provider.
  • A commercial bank in connection with a systems integration agreement related to its acquisition of computer hardware and software.
  • A California-based mortgage company in connection with its acquisition of remote processing services from a Florida-based service provider.
  • A California telecommunications company in connection with a multi-million dollar software development agreement with a Canadian software developer which required disclosure of key technology by the acquiring party.
  • A national temporary services provider in connection with a pilot system development agreement and related system acquisition agreement in connection with their acquisition of strategic information systems technology.
  • A national computer repair service provider in connection with strategic alliances with various OEMs.
  • A major disk drive manufacturer in connection with the sale of its state of the art integrated circuit silicon wafer fabrication facility and related long-term silicon wafer requirements contract.
  • A manufacturer of capital equipment used in the semiconductor wafer fabrication process in connection with its initial public offering.
  • A major airline in connection with the outsourcing of a Canadian airline’s data processing operations.
  • A Korea-based multinational corporation in connection with a strategic alliance with a major California-based computer manufacturer which included a major equity investment by the Korean corporation and a variety of strategic technology agreements.
  • A major law firm in connection with its acquisition of a data processing system including the development of enterprise-specific software.
  • A cable television technology provider in connection with the sale of its hardware and licensing of its software in Thailand.
  • A national chemical distribution company in connection with its acquisition of a data processing system.
  • A national retail inventory management service and software company in connection with a software development agreement related to its next generation software product.
  • A major semiconductor company in connection with a variety of technology transactions including licensing, development, sales and acquisition of technology and components.

Representative Clients

  • Allergan
  • Edwards Life Sciences
  • Broadcom
  • NeuroSigma
  • CoreLogic

Professional Activities

  • University of California, Irvine – Dean’s Leadership Circle
  • Member, OCTANe Steering Committee
  • Co-Founder and Board Member, Orange County Chapter of the Technology Council of Southern California
  • Former Board of Directors and Executive Committee, Technology Council of Southern California
  • Member, State Bar of California, Intellectual Property Section, Computer Law Committee
  • Member, American MENSA

Attorney Articles

August 2009
"Protect it or Forget it! IP is a Valuable Asset to Your Technology Company," Orange County Business Journal