Legal insights
Analysis from the front lines of IP & technology law.
Our attorneys write about the developments shaping intellectual property—from the PTAB and the Federal Circuit to the practical realities of protecting fast-moving technology.
Purchase Agreement Review Checklist: A Practical Checklist
A working checklist for reviewing an acquisition agreement from either side of the table. It runs through the deal structure and purchase price mechanics, the representation set and its qualifiers, the disclosure schedules and their update rights, covenants and closing conditions, the six indemnity terms, insurance interaction, special indemnities, and the earnout. Separate sections cover asset deals, distressed sales, the claim procedure, and the post-closing calendar that prevents most lost claims. It is written so a reviewer can work top to bottom and finish with a list of open points ranked by dollars at stake. Every item is written so that a "no" tells you what to do next.
Publishing, Merchandising, and Character Licensing: Advances, Royalties, Approvals, and the Long Tail
Publishing and merchandising agreements are grants of copyright dressed as commercial contracts, and the money turns on how the grant is drafted rather than on the royalty rate. This article explains the grant of rights and the recurring failure of technology-neutral drafting, illustrated by the electronic rights cases that decided who owned formats nobody contemplated. It covers advances, the royalty base, the reserve against returns, and the audit rights that make royalty reporting meaningful. It then turns to character licensing, where the character itself may be protectable, and to merchandising, where approval rights and quality control are the licensor's whole protection. It closes with the statutory termination right that lets an author reclaim a grant decades later, which no contract can waive.
Publishing and Merchandising Agreement Checklist
Publishing and merchandising agreements are long, and the provisions that determine the outcome are a short list. This checklist runs the ownership diligence that must precede any grant, then the grant and reservation where most of the value sits. It covers the royalty base and its deductions, the reserve against returns, acceptance and delivery, reversion, and the audit right that makes reporting meaningful. Separate sections cover the merchandising structure—minimum guarantee against minimum performance, the approval architecture, and the quality control programme that also preserves the trademark—and the termination and sell-off mechanics. It closes with programme administration and the calendar entries that must be made at signature.
Public Company Disclosure: Periodic Reports, Regulation FD, and Insider Trading Liability
A public company's disclosure obligations are not a filing calendar; they are a system of controls that determines whether an ordinary business event becomes an enforcement matter. This article explains what the periodic reports actually require, how the Form 8-K triggers work, what Regulation FD prohibits and permits, and how materiality is assessed under TSC Industries and Basic. It covers primary liability under Rule 10b-5 and the elements a private plaintiff must plead, the duty-based framework of Chiarella, Dirks, and O'Hagan for insider trading, the misappropriation theory, Section 16 reporting and short-swing profits, and the conditions that make a Rule 10b5-1 plan a defense rather than a liability. It closes with what a functioning disclosure program looks like.
PTAB Toolkit: Petitions, Patent Owner Responses, and Motions to Amend
Working templates for PTAB practice on both sides. It includes a decision memorandum, a real party in interest worksheet, a prior art development log separating estopped from non-estopped grounds, a petition outline with claim chart and motivation-to-combine formats, stipulation language in narrow and broad forms, a stay motion outline, a preliminary response outline, a cross-examination plan, a motion to amend worksheet with an intervening rights model, a dual-track consistency log, an oral hearing preparation sheet, and settlement provisions addressing termination. Each carries drafting notes on what the Board credits and where each side most often fails. A closing table collects the governing standards and the authority for each. Adapt every template to the patent, the art, and the current state of Board practice.
PTAB Post-Grant Checklist: A Practical Checklist
A working checklist for PTAB post-grant practice from both sides. It opens with the petitioner's decision framework—what the invalidity case is made of, what estoppel would cost, and whether the Board can decide the issues that matter—then walks the real party in interest analysis, prior art development, petition drafting for all-or-nothing institution, the stipulation, and the stay motion. Later sections cover the patent owner's preliminary response and post-institution strategy, the motion to amend and its intervening rights cost, discovery, the oral hearing, appeal, and the coordination discipline dual-track practice requires. A closing section compares the alternative post-grant vehicles. Every item is written so that a "no" tells you what to do next.
Proxy Contest Toolkit: Advance Notice Bylaws, Response Plans, and Solicitation Materials
This toolkit provides the working documents of activism preparedness and proxy contest response, weighted toward the ordinary-year work that determines outcomes. It opens with an activist self-assessment scorecard, advance notice bylaw provisions with the disclosure requirements that matter, a response team roster, and a tabletop scenario. It then supplies a Schedule 13D assessment worksheet, a nomination notice review form with a caution against strained rejections, a vote model template built for universal proxy where each seat is contested separately, and an institutional engagement plan with a proxy adviser submission outline. Later tools cover a settlement term sheet with the information-sharing and trading-restriction terms that get missed, a rights plan decision memorandum documenting the investigation that enhanced scrutiny requires, a communications approval protocol, and a post-campaign debrief.
Prosecuting and Defending a Section 101 Challenge: A Practical Guide
A step-by-step guide to raising and defeating a patent eligibility challenge, written for counsel on both sides and for prosecutors whose drafting choices decide the outcome years later. It covers the two-week screen, reading the specification for admissions, choosing the vehicle and the timing, briefing the representative claim and the claim construction question, building or defeating a Berkheimer factual dispute, and what to do at the Patent Office when an examiner rejects under Section 101. Separate parts address the patentee's pleading strategy, portfolio and case-selection decisions, appeal, and fee exposure. It includes worked motions with named parties, budgets, timelines, and the mistakes that decide these motions.
Private Fund Toolkit: Term Sheets, LPA Provisions, and Side Letter Management
This toolkit supplies the working documents of a private fund formation: a term sheet skeleton, clause language for the provisions that get negotiated hardest, a side letter matrix structure, an MFN circulation and election package, and the internal policies a manager needs before the first deal. The clause material is drafted in alternatives—manager-favorable, investor-favorable, and the middle position most funds reach—with notes on what each choice actually does. It also includes a numeric waterfall worksheet, a capital call notice form, an advisory committee charter outline, and a first-year compliance calendar. Everything here is a starting point to be adapted, not a form to be signed.
Private Fund Formation: LPA Economics, Side Letters, and Adviser Obligations
A private fund is a set of economic arrangements wrapped in three regulatory exclusions, and the work of forming one is holding all of them together. This article explains the exclusions that keep the fund outside the Investment Company Act, the private placement framework that governs the offering, and the adviser registration and conduct obligations that attach to the manager. It then works through the economics that actually get negotiated—the management fee and its offsets, the distribution waterfall and the difference between deal-by-deal and whole-fund carry, the clawback and how it is secured—and the governance provisions that matter when things go wrong: key person events, removal and no-fault termination, successor funds, and the advisory committee. It covers side letters and most favored nation clauses as a system rather than a set of documents, and closes with the diligence institutional investors actually run.
Pricing Algorithm Toolkit: Vendor Diligence, Data Governance, and Litigation Defense
This toolkit provides the working documents for an algorithmic pricing compliance programme. It opens with a vendor diligence questionnaire designed to elicit the facts a sales team will not volunteer, followed by contract clauses that remove adherence pressure, restrict data contribution, and prohibit competitor disclosure. A data provenance register and an information exchange protocol give the data function something concrete to implement. Operational tools include a reason-code taxonomy for documented human review, a competitor contact report form, document hygiene guidance for anyone writing a business case, and an adherence reporting template. The litigation section supplies a model documentation index, a litigation hold scope, and a first-response sequence for a civil investigative demand. It closes with a board memorandum template and a clean team protocol for transaction diligence.
Price Discrimination Toolkit: Pricing Audits, Cost Justification Files, and Meeting Competition Records
This toolkit provides the working documents of a Robinson-Patman compliance program, each annotated with the failure it prevents. It supplies a net price worksheet and a competing customer matrix for locating exposure, a meeting competition form designed to be completed in four minutes by someone in a customer's parking lot, and a cost justification study outline built to survive scrutiny. It provides a functional discount agreement with the two-level customer problem solved, a promotional allowance plan with alternatives and the affirmative notification letter that Fred Meyer requires, and an exception approval form. Sales and procurement training scripts, a brokerage review template, and a privileged assessment memorandum structure complete the set.