Paul E. Jahn

Partner | San Francisco

pjahn@mofo.com | (415) 268-6387

pjahn@mofo.com
(415) 268-6387

To resolve tough issues, you must be immersed in the rewards and the risks of the transaction for both sides. From there you can build balanced solutions and confidence in them.

Paul specializes in transactions involving the development, licensing, and transfer of complex technology and intellectual property. He is regularly involved in negotiations involving joint development projects, strategic alliances and joint ventures, distribution and commercialization arrangements, outsourcing transactions, adversarial patent licensing, patent portfolio acquisitions, branding agreements, and the settlement of related disputes.

He frequently counsels companies with respect to the development of new technologies, including projects involving the development and use of open source software and clean rooms. Representative clients include Caltech, CEVA, DISH Network, Hitachi, Intel, Kaiser Permanente, ON Semiconductor, Quibi, SoftBank, the University of California, and WndrCo.

These matters generally involve semiconductors, electronics, information technology, life sciences, healthcare, e-commerce, and telecommunications. Paul has extensive international experience, having been resident in offices of the firm and involved in major transactions in the United States, Asia, and Europe.

In addition to his transactional and counseling practice, Paul has represented clients in trial and appellate litigation, focusing on cases involving unfair competition, copyright, trademark, trade secret, and licensing disputes. He has also represented clients in efforts to shape intellectual property law. Before obtaining his law degree, he practiced as a legislative advocate in Brussels, Belgium, representing a coalition of major computer product manufacturers in a campaign to influence the content of a European Community directive concerning the scope of copyright protection for software. Prior to that time, he worked in Tokyo as part of a technical team representing Fujitsu in its arbitration with IBM involving copyrights for operating system software.

Representative Experience

  • ON Semiconductor

    Represented ON Semiconductor in its acquisition from GlobalFoundries of the East Fishkill, New York, 300mm fab originally established by IBM and negotiating a license to ON of advanced CMOS technology, including at the 45nm and 65nm technology nodes, assistance in converting ON wafer processes from 200mm to 300mm for transfer into the fab, and for GlobalFoundaries to act as a foundry for ON to increase its 300mm production at the fab until the end of 2022, after which ON will gain full operational control of the fab.

Rankings

  • Recommended for Outsourcing

    The Legal 500 2019
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Experience

  • Represented ON Semiconductor in its acquisition from GlobalFoundries of the East Fishkill, NY, 300 mm fab originally established by IBM, and negotiating a license to ON of advanced CMOS technology including at the 45nm and 65nm technology nodes, assistance in converting ON wafer processes from 200mm to 300mm for transfer into the fab, and for GF to act as a foundry for ON to increase its 300mm production at the fab until the end of 2022, after which ON will gain full operational control of the fab. (2019)

  • Represented DreamWorks Animation in forming its strategic partnership with Intel aimed at redefining 3-D filmmaking technology, taking advantage of Intel's visual computing products and DreamWorks Animation’s expertise in content creation.  (2008)

  • Represented Fujitsu Limited in the intellectual property aspects of its formation (together with Advanced Micro Devices, Inc.) of Spansion LLC, a joint venture that combined Fujitsu's and AMD's world-wide flash memory businesses, and in connection with Spansion's initial public offering.  (2003-06)

  • Negotiated Kaiser Permanente’s seven-year, $500 million outsourcing to IBM of data center operations, including computer systems, storage systems and associated software.  (2009)

  • Represented ContentGuard, a Xerox PARC spin-out jointly held by Microsoft, Time-Warner, and Thomson, in licensing Nokia under ContentGuard’s digital rights management patent portfolio.  (2008)

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