Jose A. Esteves

Jose A. Esteves

Partner, Intellectual Property and Technology

Jose A. Esteves leverages nearly 25 years of legal experience, as well as a master’s degree in electrical engineering and three years of computer design engineering experience, in assisting clients to evaluate and leverage intellectual property and technology assets.

Bio

Mr. Esteves has advised clients in a broad range of high-profile transactions, including for Intel, MIPS, Visa and IMAX. He counsels clients in connection with matters involving traditional intellectual property (IP) and technology, emerging technologies such as AI and machine learning, blockchain and NFTs, as well as privacy and cybersecurity. He structures strategic collaborations; joint ventures; cloud/outsourcing and processing transactions; complex carve-out arrangements in M&A; and development, licensing, manufacturing, supply, distribution, marketing and other arrangements.

In addition, Mr. Esteves structures complex IP monetization transactions and has significant experience supporting mergers and acquisitions and structured and IP-backed financing transactions. He advises clients in a broad range of industries, including fintech, high tech, health care, biopharma and consumer products. He advises a diverse group of clients from the U.S. and abroad, including Europe, Asia and South America.

In recognition of his work, Intellectual Asset Management magazine, the leading trade publication focused on monetizing intellectual property, includes Mr. Esteves on its list of the IAM Strategy 300 — The World’s Leading IP Strategists.

Representative transactions and clients in recent years include:

Financial Services and Technology:

  • JPMC in connection with its divestiture of the Quorum blockchain platform to ConsenSys and associated agreements, the licensing and hosting of its online banking transactions platform and certain other strategic transactions;
  • Moody’s in its acquisition of financial data aggregator and analytics providers Bureau Van Dijk and Reis, Inc., as well as other data and AI-related transactions;
  • Ripple in connection with certain contractual arrangements for its payments network;
  • BlackRock in connection with intellectual property and technology aspects of several strategic transactions;
  • Visa, Inc. in its proposed but terminated acquisition of personal financial data aggregator Plaid, Inc.;
  • Fortress Investment Group in numerous transactions, including various IP-backed investments and financings and the acquisition of OneMain Financial from Citigroup and a joint ownership interest in Citigroup’s Symphony software platform;
  • Polypaths LLC in its various licensing and collaboration arrangements for its fixed-income analytics products;
  • PHH Corporation in various mortgage origination and servicing outsourcing agreements;
  • MassMutual in the carve-out sale of its retirement plan business to Empower Retirement;
  • Fintrax Group in its acquisition of cross-border payments processor Planet Payment and various other clients in banking acquisitions and divestitures; and
  • various banking/payment processing arrangements, including in connection with Citibank, Ant and others.

IP Monetization and Finance:

  • Morphosys, AG in structuring royalty interest and synthetic revenue participation financing arrangements worth $1.3 billion;
  • Goldman Sachs and Bank of America Merrill Lynch in several securitizations of bundled pharmaceutical patent royalty streams;
  • Theravance, Inc. in a $1 billion royalty interest sale, as well as in $450 million and $250 million royalty securitizations;
  • IPXI in connection with structuring matters and a ULR patent license exchange offering;
  • Amylin Pharmaceuticals, Inc. in structuring an innovative synthetic $1.2 billion revenue interest with Eli Lilly;
  • MIPS Technologies, Inc. in its simultaneous patent sale to AST and sale of its operating business to Imagination Technologies Group — ranked as a top matter in the Financial Times’ U.S. Innovative Lawyers report; and
  • various clients in patent monetization transactions, royalty interest purchases and IP-collateralized loans.

High-Tech:

  • Intel in its sale of its 5G modem business to Apple; its divestiture of its home networking business to MaxLinear; its sale of its Wind River OS business to TPG; and other strategic matters;
  • IMAX Corporation in strategic technology transactions, including a virtual reality joint venture with Google; technology licensing and collaborative development and supply arrangements for next-generation movie projectors; and its global reorganization;
  • Emtek in its acquisition of the BlackBerry consumer messaging platform, the hosting of said platform with Google, and payment processing and e-commerce arrangements;
  • Nokia Corporation in its merger with Alcatel Lucent, the renegotiation of a technology joint venture and a strategic product line acquisition; and
  • a strategic buyer in the acquisition of an automobile manufacturer in conjunction with a simultaneous automotive joint venture with a third party, as well as supply, technology licensing, IT services, product distribution and transitional services arrangements.

Pharma/Biotechnology/Digital Health:

  • Centene Corporation in a strategic joint venture to develop a management platform for payors in the health care space, as well as in digital health-related matters and various acquisitions;
  • Pfizer, Inc. in its strategic digital health collaboration with Verily, Inc., certain other strategic transactions and multiple drug development collaborations;
  • Regeneron Pharmaceuticals, Inc. in several drug collaborations with large pharma companies; and
  • Shionogi & Co., Ltd. in a part-entity, part-contractual global joint venture with SmithKline Beecham Corporation to develop, manufacture and commercialize HIV drugs.

Other Selected Matters:

  • Zenimax in the sale of its gaming business to Microsoft, Inc.;
  • Wildlife Studios in connection with certain third-party advertiser arrangements;
  • Yankees Entertainment Sports Network (YES Network) in its licensing of media rights to New York Yankees baseball games;
  • ExxonMobil in the structuring of a technology research and development and licensing joint venture with Rosneft;
  • Kingfisher Airways in a master licensing and hosting contract with Sabre Airline Solutions for a suite of core airline software;
  • Organic Fuels in a joint venture with the University of Texas and the licensing of technology related to renewable fuel from algae;
  • cross-marketing, distribution and services agreements among Avis/Budget, Wyndham International, Century21 and Travelport in connection with the separation of Cendant Corporation;
  • JAB in a coffee products joint venture between its D.E. Master Blenders business and Mondelez International, including ancillary technology and brand licensing and supply arrangements; and
  • Keurig in a joint venture to develop a new consumer beverage product device.

Mr. Esteves is the founder and chairperson of the Practising Law Institute’s annual IP Monetization conference. He routinely presents at seminars and conferences, including on the acquisition and transfer of IP, IP monetization and finance, and complex transactions.

Recent Speaking Engagements

  • Panelist, CIO Leadership Forums on AI and Emerging State Data Privacy Laws, 2020-21
  • Presenter, “Internet of Medical Things,” Practising Law Institute Internet of Things conference, 2019-present
  • Chairperson, “IP Monetization: Maximizing the Value of Your IP Assets” conference, Practising Law Institute, 2009-20
  • Moderator, Panel on AI, Big Data and Blockchain, IP Dealmakers Forum, 2016-19
  • Moderator, Panel on Investing in Invention, IP Investment Conference

Credentials

Education

  • J.D., Yale Law School, 1995
  • M.S. (Electrical Engineering), Columbia University, 1992
  • B.S. (Electrical Engineering), New Jersey Institute of Technology, 1989 (magna cum laude)

Admissions

  • California
  • New York

Jose A. Esteves

Partner, Intellectual Property and Technology
jose.esteves@skadden.com