Len Jacoby

For over 25 years, Len has provided clients with practical, creative and business-oriented advice in transactions involving IP, technology, data, brands and content. Len advises public and private companies, private equity funds and investment banks on such issues in the context of mergers and acquisitions, spinoffs and divestitures, joint ventures, investments, public offerings and other corporate matters. He also represents clients on business deals and strategic considerations involving the commercialization of intangible rights and related products and services, including licenses, R&D agreements, services agreements and other commercial arrangements.

Len’s diverse industry experience includes information and communications technology, hardware, software, artificial intelligence, financial services and fintech, life sciences, industrial products, manufacturing, media, retail and consumer products, and food and beverages. Len holds a Certificate in Cybersecurity Oversight from Carnegie Mellon University’s Software Engineering Institute and is a Certified Information Privacy Professional (CIPP/US) under the International Association of Privacy Professionals.

Before joining Cooley, Len built and served in a global leadership role for the transactional IP practice at Cleary Gottlieb Steen & Hamilton. Prior to that, he was a partner at Wilson Sonsini.

Representative Matters

Illustrative Public Transactions

• 3M in numerous acquisitions, including its $1 billion acquisition of M*Modal’s cloud-based, artificial intelligence-powered technology business, and its related IP licenses and strategic services agreement with M*Modal’s remaining service business; $2 billion acquisition of Scott Safety from Johnson Controls; $2.5 billion acquisition of Capital Safety from KKR; and acquisitions of Ceradyne and Cogent Systems
• Abu Dhabi Investment Authority (ADIA) in its participation in a $500 million round of equity financing in Moderna Therapeutics, a clinical-stage biotechnology company developing mRNA therapeutics and vaccines
• Agilent Technologies in its $2.2 billion acquisition of ACEA Biosciences and cancer diagnostics company Dako from private equity group EQT
• Alphabet/Google in IP matters relating to its corporate restructuring into Alphabet Inc. and in numerous M&A matters, including Google’s acquisitions of Admeld, AdMob, Autofuss, Bepob, Clever Sense, Episodic, ITA Software, Like.com, Mechanical Zoo, Meka Robotics, Next New Networks, Pattern, Quickoffice, reCAPTCHA, Redwood Robotics, Viewdle, Wavii, Waze, Wildfire Interactive, Workbench, and Zave, as well as its initial acquisition of Motorola Mobility, in addition to other IP matters and counseling
• América Móvil in its $905 million acquisition of Nextel’s operations in Brazil and $648 million acquisition of Telefónica’s operations in El Salvador and Guatemala
• American Express in the formation of a joint venture with Lianlian Group for a mobile payment network in China, a joint venture of its Global Business Travel division with an investor group led by Certares and Qatar Investment Authority, and its $1.1 billion acquisition of GE’s corporate payment services business
• Barclays in its sale of its risk analytics and index solutions business to Bloomberg, acquisition of Bear Wagner Specialists and its acquisition of the core business of Lehman Brothers out of bankruptcy (together with related IT and data services agreements)
• Bausch + Lomb in its acquisition of ISTA Pharmaceuticals, a prescription eye care business
• Booz & Company in its sale to PwC
• Carlyle Global Partners in their minority investment in roofing and building materials company TAMKO, in tandem with the spinout of its composite decking business
• Citi Venture Capital in its acquisition of Ness Technologies, a provider of information technology solutions and services
• Consortium of banks, including Bank of America, BNY Mellon, Citi, Credit Suisse, Morgan Stanley and UBS, in establishing the Open Platform for Unregistered Securities
• Consortium of banks, including Bank of America, Barclays Capital, Citi, Credit Suisse, Goldman Sachs and Morgan Stanley, in an investment in Tradeweb Markets
• Consortium of banks, including Barclays, BNY Mellon, Credit Suisse, Goldman Sachs and JP Morgan Chase, in the founding of Clarient Entity Hub with DTCC and its subsequent sale to Thomson Reuters
• Consortium of banks, including Goldman Sachs, J.P. Energy Ventures, Morgan Stanley and Tudor Investment Corp., in a JV with the Chicago Mercantile Exchange to form carbon exchange GreenX
• Dow in certain intellectual property matters related to its $130 billion merger of equals with DuPont and the $1.1 billion sale of its Brazilian corn seed business to CITIC Agri Fund
• EquiLend in its development and collaboration agreement with Stonewain to offer an integrated securities finance platform
• General Mills in its $8 billion acquisition of Blue Buffalo Pet Products
• GlaxoSmithKline in its acquisition of Human Genome Sciences, and the restructuring of joint venture between GSK’s ViiV Healthcare (with Pfizer) and Shionogi & Co. in connection with the development and commercialization of HIV integrase inhibitor drugs
• Grupo Bimbo in its acquisitions of Sara Lee Corp.’s North America, Spain, and Portugal Fresh Bakery businesses; acquisition of East Balt Bakeries; and other licensing and IP matters
• Henkel in its $3.6 billion acquisition of Sun Products Corp., an owner of premium laundry and home care brands, from Vestar Capital Partners, and acquisitions of The Bergquist Company, Sexy Hair Concepts, Alterna, and Kenra Professional
• Hillhouse Capital in its formation of a joint venture with Peet’s Coffee to enable their first international expansion and open coffee cafes and retail locations in China
• Home Depot in its acquisition of Redbeacon
• Initial public offerings on behalf of investment banks and companies, including, most recently, Pinterest
• International Flavors & Fragrances in its $7.1 billion acquisition of Frutarom, and acquisitions of David Michael & Co. and Ottens Flavors
• Istithmar in its joint venture with Education Media and Publishing Group to hold, finance and manage certain educational content-related investments and activities
• Jeffrey Bezos-controlled entities in their $250 million purchase of The Washington Post and various regional publishers, including related trademark and content licenses with respect to retained operations and publications.
• Investment Corporation of Dubai in its participation in an investment in Inari, a next-generation seed company using and developing related computational and genetic tools
• JUUL in the $12.8 billion minority investment by Altria (including related intellectual property license and commercial agreements), and certain other IP matters and counseling
• Keysight Technologies in its acquisitions of Ixia and Anite, a wireless R&D supplier
• Kindred Healthcare hospitals and acute care services in its $4.1 billion sale to a consortium consisting of TPG, Welsh Carson, and Humana, and previously in its $1.8 billion acquisition of Gentiva Health Services
• Lenovo in its acquisition of the x86 server hardware and services business of IBM
• Medtronic in its $42.9 billion acquisition of Covidien and divestiture of certain medical device assets for regulatory compliance
• Morgan Stanley in a joint venture with Citi to combine their retail brokerages and wealth management businesses by forming Morgan Stanley Smith Barney
• OpenText in its acquisitions of Guidance Software and GXS Group
• Puma in its acquisition of Fortune Brands’ Cobra golf business
• RenaissanceRe in technology transactions relating to catastrophe modeling and risk assessment tools, including the licensing of third-party software models and databases, acquisitions of technology assets, and counseling on a variety of other IP-related matters
• Ricoh in its JV with and subsequent acquisition of IBM’s printing systems business
• Roquette in its acquisition of Sethness Products Company, a producer of high-quality color products for the food and beverage industry
• Sabre in the sale of Travelocity to Expedia
• Samsung Electronics in the sale of its printer business to HP Inc.
• Stanley Black & Decker in its acquisitions of International Equipment Solutions’ attachments business, Sonitrol and CRC-Evans, and sales of its mechanical security business to dormakaba and Hardware & Home Improvement Group (HHI) to Spectrum Brands
• Tech Data Corp. in its $2.6 billion acquisition of Avnet’s technology solutions business
• Tom Ford in product placements in James Bond movies, and other IP matters and counseling
• TPG in multiple acquisitions, such as RCN and Grande Communications, DTZ, Cassidy Turley, Primedia (and Primedia’s purchase of Rent.com), Vertafore and Envision Pharmaceutical, and in its sale of portfolio companies, such as Times Higher Education, TES Global, HCP Packaging and Bally
• Verance in the global licensing of its content protection and anti-piracy technology to Hollywood studios and consumer electronics companies pursuant to FRAND obligations with a standard setting organization, as well as advice on other IP and commercial matters
• VeriSign in divestitures of multiple businesses, including its online authentication and security business to Symantec
• Vitro in its acquisition of glass manufacturing businesses from PPG and LKQ, and its sale of its food and beverages glass container business to Owens-Illinois
• Warburg Pincus in its acquisition and subsequent sale of Electronic Funds Source and its acquisitions of Ascentium Capital and, together with Vestar Capital, of Triton Containers
• Western Digital in its $19 billion acquisition of SanDisk; acquisition of cloud storage provider Amplidata; sale and licensing of certain hard disk drive assets to Toshiba to obtain regulatory clearance for its $4.8 billion acquisition of Hitachi’s global storage division; patent acquisition and cross-license agreements with IBM; and other IP counseling and licensing matters

Other Select Matters

• Advised prominent charitable and philanthropic foundations on research and development agreements and intellectual property issues relating to third-party collaborations intended to develop technologies to improve the quality of life in impoverished countries, treat infectious diseases in developing nations or mitigate the impact of environmental and social externalities
• Advised a prominent technology company on a license, development and commercialization agreement relating to state-of-the-art artificial general intelligence (AGI) technologies
• Advised a leading developer of lithium-ion batteries for electric vehicles on a joint venture with a prominent automotive company
• Advised a prominent technology company on a joint venture involving autonomous vehicles
• Advised an automotive components company on their manufacturing, supply and license agreement for a next-generation component of a well-known sports car
• Advised a large retailer on a license, manufacturing and distribution agreements with a famous apparel brand to establish a chain of branded retail stores in China
• Advised a technology and consumer products company on the IP aspects of a global restructuring arising from tax considerations
• Acted as a third-party neutral on behalf of two prominent law firms to address patent cross-license issues and spinout rights in the context of a global technology M&A deal
• Coordinated the landscaping and analysis of competitors’ patent portfolios (in tandem with a patent boutique) that helped guide a client’s considerations for potential acquisitions.
• Acquired patent portfolios from technology companies and sold nonessential patents to non-practicing entities.
• Licensed software models and databases to hedge funds
• Negotiated software licenses and development agreements and software-as-a-service agreements, with financial institutions, consumer goods companies and technology companies
• Negotiated e-commerce and ad serving platforms agreements for websites of large companies.
• Advised licensees of IP rights on the scope of their royalty obligations and sublicensing rights
• Counseled clients in industries ranging from food and beverages to financial services on risks associated with trade secret and know-how licenses
• Represented emerging growth biotechnology and medical device companies on license and collaboration agreements with life sciences companies
• Settled a dispute with a US government agency over the government’s rights to a public company’s proprietary software model and underlying patent rights, which was resolved by entering into a cooperative research and development agreement
• Settled a dispute regarding a university’s breach of its exclusive intellectual property license to a public company, which was resolved by remedying the situation and agreeing on protocols to mitigate the possibility for future disputes
• Settled a dispute with a former research and development partner regarding the filing of certain patent applications, which was resolved by entering into a patent assignment and license agreement
• Settled a dispute regarding the ownership of certain specifications, know-how and trade secrets necessary for the production of a famous food product, which was resolved through an intellectual property ownership, license and confidentiality agreement