David Hayes is a partner in the in the Orange County and Silicon Valley offices of Haynes and Boone. His practice focuses on companies in need of counseling on in a wide range of transactions and industries including, intellectual property transactions, mergers and acquisitions, collaborations, joint ventures, outsourcing, licensing, distribution and other deal-related work.
David's practice includes extensive experience in every aspect of corporate and intellectual property related issues across a wide range of transaction types and industries including, 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, commercialization of intellectual property assets, celebrity endorsement, advertising production, trademark licensing, mergers and acquisition, financing as well as on the buying, selling, leasing, distribution, licensing and development of high technology products and services.
David's industry experience covers a wide variety of areas including life science, medical devices, computer hardware, semiconductors, software and information technology and outsourcing, among others. His practice includes domestic and international transactions that focus on the entire intellectual property life cycle including, acquisition of intellectual property assets, research and development, distribution of intellectual property assets, patent, copyright and trademark licensing, outsourcing and facilities management, strategic alliances, biotechnology research and development, computer services and software and hardware development.
David advises clients on agreements including co-promotion, distribution, technology-related professional services, semiconductor supply, system integration, software and hardware maintenance and disaster recovery. David's work includes acquisitions involving high technology targets and computer system sales and acquisitions. He assists clients with intellectual property protection programs and copyright and trademark registration prosecution.
Prior to practicing law, David 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 Transactions
Licensing
- A major pharmaceutical company in connection with in-licensing Phase 3 compounds and joint control of testing and approval process.
- A major medical device company in connection with in-licensing new device technology.
- Early stage start up in connection with in-licensing foundational technology from a major university.
- A major communications chip company in connection with various licensing and commercial transactions.
- General representation of a major Internet access service provider in connection with the licensing and distribution of Internet access, browser and e-mail products.
- 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.
Technology Acquisition
- A major biotechnology company in connection with the spin-out of major development program to VC-backed venture
- Many biotechnology companies 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.
- 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.
- 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 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 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.
Outsourcing and Strategic Alliances
- A major data processing service provider in connection with the outsourcing of a major defense contractor's nationwide data processing operations.
- A major disk drive manufacturer in connection with a strategic alliance for the marketing and distribution of newly developed technology.
- 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 national computer repair service provider in connection with strategic alliances with various OEMs.
- 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.
Product Development, Marketing and Distribution
- A major pharmaceutical company in connection with a long-range joint development and marketing collaboration.
- A major pharmaceutical company in connection with multiple co-promotion agreements.
Major online retail organization in connection with various product distribution agreements.
- 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.
- An 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.
- An 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.
- A major fabless semiconductor company in connection with a variety of agreements related to the sale and distribution of products.
- 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.
- 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 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 retail inventory management service and software company in connection with a software development agreement related to its next generation software product.
General Representation
- 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.
- 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 manufacturer of capital equipment used in the semiconductor wafer fabrication process in connection with its initial public offering.
Selected Publications and Speeches
- "An Overview of the New JOBS Act," Orange County Business Journal, August 27, 2012.
- "Protect it of Forget it! IP is a Valuable Asset to Your Technology Company," Orange County Business Journal, August 2009.
Online Publications
09/18/2012 -
Orange County Business Journal Guest Article: An Overview of the New JOBS Act
The Jumpstart Our Business Startups Act (the “JOBS Act”) was signed into law on April 5, 2012. The JOBS Act contains provisions designed to assist small businesses and growing companies in obtaining capital, including permitting general solicitations or advertising when making a private offering, creating an exemption from registration for “crowdfunding,” relaxing requirements for initial public offerings, and increasing the number of shareholders a company is permitted to have before it must register with the Securities and Exchange Commission (the “SEC”).