Jose A. Esteves
Jose A. Esteves focuses on assisting clients in maximizing the value of their intellectual property and technology assets, including through strategic stand-alone transactions such as collaborations, joint ventures, outsourcing arrangements and other complex technology transactions; stand-alone and mergers-and-acquisitions-related development, licensing, supply, marketing and support arrangements; and through IP monetization and financing transactions.

Bio

Mr. Esteves advises a diverse group of clients from the U.S. and abroad, including Europe, Asia and South America. Mr. Esteves also handles intellectual property and technology aspects of traditional mergers and acquisitions, financings, public offerings and commercial transactions. Intellectual Asset Management magazine, the leading trade publication focused on IP monetization, includes Mr. Esteves on its list of the “IAM Strategy 300 — The World’s Leading IP Strategists.”

Representative transactions and clients during the past few years have included:

IP Monetization and Finance:

  • MIPS Technologies, Inc. in its simultaneous patent sale to AST and sale of its operating business to Imagination Technologies Group — ranked among the top matters in the “Lawyers to the Innovators” category in the Financial Times’ 2013 “US Innovative Lawyers” report;
  • Goldman Sachs and Bank of America Merrill Lynch in several securitizations of bundled pharmaceutical patent royalty streams;
  • Theravance, Inc. in a $450 million royalty securitization;
  • IPXI in connection with certain structuring matters and in connection with a certain ULR patent license exchange offering;
  • Amylin Pharmaceuticals, Inc. in structuring an innovative synthetic $1.2 billion revenue interest with Eli Lilly relating to the take-back of two drugs; and
  • various clients in patent monetization transactions, royalty interest purchases and IP-collateralized loans.

Complex Technology Transactions:

High-Tech:

  • Nokia Corporation in its merger with Alcatel Lucent, renegotiation of a strategic technology JV and in a strategic product-line acquisition;
  • BlackBerry Limited in its 2013 strategic review and in certain strategic IP transactions;
  • PMC-Sierra in connection with a strategic product-line acquisition and associated development and supply agreements and in the sale of its business;
  • IMAX Corporation in licensing in technology and negotiating collaborative development and supply arrangements for next-generation movie projectors, and in its global reorganization.
  • a buyer in the acquisition of an automobile manufacturer, with a simultaneous automotive joint venture with a third party, and supply, technology licensing, IT services, product distribution and transitional services arrangements; and
  • ABB Ltd. in a strategic patent transaction.

Pharma/Biotechnology:

  • Pfizer, Inc. in the Pfizer-Allergan merger and certain other strategic and certain drug development collaboration/co-promotion transactions;
  • 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.

Outsourcing:

  • Kingfisher Airways in a master licensing and hosting contract with Sabre Airline Solutions for a suite of core airline software;
  • PHH Corporation in various mortgage origination and servicing outsourcing agreements; and
  • Getronics NV in its business/platform reorganization and divestiture of its U.S. outsourcing business, and related subcontracting.

Energy:

  • ExxonMobil in the structuring of a technology R&D and licensing joint venture with Rosneft;
  • Vitol in the acquisition of Royalty Dutch Shell’s downstream oil business in Australia, including trademark, supply and product marketing and distribution agreements;
  • Westport Innovations in the renegotiation of its natural gas engines JV and supply agreements with Cummins; and
  • Organic Fuels in a JV with the University of Texas and the licensing of technology related to renewable fuel from algae; and
  • Entergy Corporation in several strategic transactions.

Media/Content/Consumer Products:

  • Yankees Entertainment Sports Network (YES Network) in its licensing of media rights to New York Yankees baseball games;
  • an online social networking site and technology start-up in a development, licensing and hosting relationship with a major media and entertainment company;
  • cross-marketing, distribution and services agreements among Avis/Budget, Wyndham International, Century21 and Travelport in connection with the separation of Cendant Corporation;
  • Acorn Holdings in a coffee products JV between its D.E. Master Blenders business and Mondelez International, including ancillary technology and brand licensing and transitional services and supply arrangements; and
  • Gama Healthcare Ltd. in a trademark license and marketing and distribution agreement with a major consumer products company.

Mr. Esteves is the founder and chairperson of PLI’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.

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