Mergers, Acquisitions, and Asset Sales

• Counsel for Hitachi on intellectual property and licensing issues in its $2.05 billion deal to combine its hard disk drive operations with those of IBM, including all technology transfer aspects of the transaction and advising Hitachi with respect to strategic licensing issues both during and in the aftermath of the transaction.
• Counsel for Fujitsu on intellectual property and licensing issues in the restructuring of its flash memory joint venture with AMD, including the contribution of intellectual property from the parents to the joint venture and renegotiating Fujitsu and AMD’s enterprise-wide patent cross-license.
• Counsel for Charles Schwab on intellectual property issues in its $500 million dollar acquisition of CyBerCorp, an electronic trading technology and brokerage firm and developer of intelligent order routing software.

Adversarial Patent Licensing

• Counsel for EchoStar in its negotiations with Gemstar for a license to Gemstar’s electronic program guide patents and related technology and to settle all outstanding litigation between the two companies.
• Counsel for Chiron in its negotiations with Roche relating to royalties due for use of Chiron’s blood screening patents and to settle a variety of pending disputes between the companies.
• Counsel for the Regents of the University of California in structuring a contractual framework for resolving a complex inventorship and licensing dispute with Wellstat Therapeutics and Repligen. 
• Counsel for a major integrated health care provider in its negotiations with Ronald Katz for a license to Katz’s extensive portfolio of patents on interactive voice response systems. 
• Counsel for Tokyo Ohka Kogyo in its separate negotiations with Dow Corning, IBM, and DuPont relating to patents on photoresist and strippers.

Distribution Arrangements/Strategic Alliances/Technology Procurement and Sales

• Counsel for Check Point, a leading provider of firewall software, in its strategic relationship with Nokia to develop and distribute a virtual private
• network appliance, including negotiations regarding technology improvements, worldwide fulfillment through hubs, sparing, and support.
• Counsel for Lucasfilm in negotiating its agreements with Apple and AOL for the hosting and distribution of the trailers and promotional videos for Star Wars films over the Internet.
• Counsel for pcOrder, an affiliate of Trilogy, in negotiating an agreement with Compaq to provide the technology platform, content services, and order network to support Compaq’s worldwide e-commerce initiatives.
• Counsel for Qwest in its negotiations with Siebel related to providing the Siebel Sales for Workgroups product on a hosted basis to mid-market customers.
• Counsel for PMI, a large private mortgage insurer, in a transaction with Infosys to develop a technology platform for customer service, policy servicing, and claims, involving tens of millions of dollars in development work.
• Counsel for Advantest in developing and implementing a strategy for licensing of next generation probe card technology from multiple vendors and in negotiation of related agreements. 
• Counsel for Check Point, a leading provider of firewall software, in out-bound OEM arrangements with Sprint and others and in-bound OEM relationships with, e.g., RSA, Chrysalis, and Solid Technology.
• Counsel for Scudder Weisel Capital in its negotiations with Sapient for the development of an integrated web-based content delivery and management system.
• Counsel for PMI in a series of transactions with PeopleSoft related to licensing PeopleSoft’s suite of human resources and finance programs, hosting, and related services. 
• Counsel for Aspect in its long-term IT outsourcing arrangement with EDS. 
• Numerous hardware purchase negotiations, including, e.g., Qwest/Cisco (telecommunications equipment); Hitachi/IBM Deutschland (media for HDDs); Fujitsu/Hewlett-Packard (HDDs).

Dispute Resolution

• Counsel for a large software company in negotiating a settlement of a dispute with IBM over intellectual property rights creating during the course of a consulting engagement and a related multi-million dollar billing dispute. 
• Counsel for Charles Schwab with respect to Advent’s plans to discontinue support of a software interface between the two companies’ products that is an important tool for numerous Schwab clients. 
• Counsel for Aspect in restructuring its relationships with two providers of OEM software, eGain and Kana, including negotiation of the termination of a distribution and development agreement with eGain, responding to a claim for unpaid fees, and asserting Aspect’s claims of eGain’s breach of development obligations, and restructuring a cross-distribution arrangement with Kana, an eGain competitor. 
• Counsel for Check Point in its dispute with Sendmail over software rejected during acceptance testing. 
• Counsel for Pioneer in resolving issues in its website development and hosting arrangement with Frontera.

Counseling

• Mr. Jahn has an active counseling practice with respect to matters such as joint development projects, compatible development and the use of clean rooms, technology licensing, the law of the Internet, protection of trade secrets, and disputes relating to the sale of goods, both domestically and internationally, often involving the “battle of the forms.” He regularly advises clients such as AIG, Ask Jeeves, BEA, Charles Schwab, Fujitsu, Hitachi, Lucasfilm, Syndesis, and U.S. Borax.
• The development and distribution of open source software is another area of Mr. Jahn’s expertise. He has defended clients against assertions of copyright infringement by the Free Software Foundation (the organization that created and polices violations of the “GNU General Public License” or “GPL”) relating to use of open source software, including negotiation over the interplay of open source licenses with patents. He also is counsel for a major hardware vendor, a major Linux distributor, and several large-scale Linux users with respect invitations to license intellectual property rights allegedly related to Linux and other open source software.