Dana Hayter

Dana Hayter is a Partner in the firm’s Intellectual Property practice where he focuses on technology transactions, including joint development and litigation settlement agreements, IP aspects of mergers and acquisitions, patent and technology transfers, and patent and technology licensing.

Mr. Hayter also has specific expertise in developing and implementing intellectual property strategy, including significant experience helping clients evaluate the business impact of proposed legal strategies using advanced economic, financial, and decision tools in conjunction with financial and economic professionals.

This expertise, combined with his early career litigation experience (including first chair, second chair and trial team experience in US courts) and his internationally recognized deal-making acumen, sets him apart from most outside counsel and allows him to apply a remarkably diverse skill set to deliver creative, business-focused solutions to his clients’ most complex intellectual property transactions.

Mr. Hayter’s solutions-driven focus in IP strategy, litigation, and transactions have earned him recent recognitions as a Top 40 IP Market Maker and one of the IAM Strategy 300 by Intellectual Asset Management Media (IAM). In private practice, he has led patent license negotiations that have generated net payments to his clients of nearly $1 billion.

In its 2020 recommendation of Mr. Hayter in the IAM Patent 1000, the publisher noted, “Dana Hayter is known for his innovative approach to structuring deals in the semiconductor, software, and wireless industries.” The guide further recognizes him for working closely with general counsel, CFOs, and CEOs to implement smart licensing initiatives and other legal strategies.

Earlier in his career, as Intel’s V.P., Law and Policy Group, Associate General Counsel, Technology Licensing, Mr. Hayter was a leader of Intel’s patent and technology licensing strategy during the rapidly evolving convergence of PCs and mobile devices and served as an architect of patent and licensing programs that catapulted Intel into the top tier of patent purchasers and licensors worldwide.

Representative Experience

Patent Licensing, Litigation & Acquisitions

• Represented several multinational technology enterprises based in the US and abroad in multiple national and cross-border patent cross-license transactions, including initial presentation of claim charts and other patent data, litigation strategy, negotiation and drafting of term sheets and definitive agreements, and post-closing communications and advice. Represented clients included both payors and recipients of negotiated payments.
• Represented Fortune 100 technology company in negotiating and drafting the agreements to settle all outstanding patent and antitrust disputes with a key competitor, including a settlement agreement, a patent cross-license and a 10-digit payment.
• Testified in deposition and in open court regarding novel IP questions presented in the bankruptcy of U.S. subsidiaries of a foreign debtor subject to overseas insolvency proceedings.
• Served as designated Rule 30(b)(6) witness and as percipient witness in multiple IP infringement cases and competition law matters.
• Represented a well-known enterprise in the mobile technology ecosystem in multiple transactions for sales of its patents.
• Represented Fortune 100 technology company in all phases of its 9-digit acquisition of more than 1600 patent assets related to wireless technologies.
• Represented a prominent technology firm in a sale of patents to an emerging entrant in a business from which the technology firm had exited.
• Represented a practicing entity technology company in all phases of its 8-digit acquisition of patents related to Wi-Fi, LTE and wireline home networking from another practicing entity seller.
• Represented a Fortune 100 technology company in its negotiation of a quantum computing patent license with a global provider of computing, software, and infrastructure services.
• Represented a Fortune 100 technology company in its negotiation of a complex patent license and license on transfer agreement with a large, diversified, Asian manufacturer.
• Represented a pure-play foundry in negotiating a patent license agreement with a developer and manufacturer of mobile communications technology.
• Represented multiple clients in their evaluation and negotiation of proposed agreements with various patent pool licensors.

Technology Licensing and Joint Development

• Represented a leading-edge U.S. manufacturer of AI semiconductor components in all aspects of its technology licensing and manufacturing relationships.
• Represented a U.S. semiconductor company in the lead-off license of a now widely used, fast interconnect technology to a key system customer.
• Represented a U.S. “fabless” semiconductor company in a strategic agreement pursuant to which it would jointly develop a key data interface IP block with a competing manufacturer of ASICs.
• Represented a multinational semiconductor company in a strategic development, marketing and intellectual property licensing arrangement with a provider of storage solutions and controllers pursuant to which the parties developed a custom controller ASIC.
• Represented a pure-play foundry in negotiating a patent and technology license with a leading developer of microprocessor technology.
• Represented a marketing and advertising company in its development agreements with multiple builders of custom mobile and back-end software solutions.

IP in Bankruptcy, Insolvency and Restructuring Matters

• Represented one of the final bidders in all phases of its participation in the largest auction of patents ever conducted by a U.S. Bankruptcy Court.
• Represented a large energy industry debtor before a U.S. Bankruptcy Court in proceedings to obtain approval for its plan of reorganization over the objections of creditors asserting legal claims against the debtor.
• Represented the spin-out of a leading hand-held device company in all aspects of the creation of a “bankruptcy remote” IP holding company and in subsequent transactions to license to its affiliates after the spin-out.
• Represented various purchasers of IP assets in sales pursuant to Section 363 of the U.S. Bankruptcy Code.
• Represented an insolvent data security software company in its recapitalization to obtain additional capital to fund business operations and growth.
• Provided IP advice to a large technology company in connection with the restructuring of its manufacturing joint venture with another large company.

Trade Secret Matters

• Represented a technology company to recover and ensure continued protection of inadvertently disclosed trade secrets.
• Represented and advised a food and beverage company in the design and implementation of an improved process for identifying, protecting, and maintaining its trade secrets.

IP Aspects of M&A

• Represented a global aerospace company in all IP aspects of its negotiations to create a joint venture to build next-generation, supersonic passenger aircraft technology.
• Represented a leading technology company in negotiation and drafting of IP agreements in connection with the formation of a joint venture to manufacture semiconductor products.
• Represented a leading multinational semiconductor company in negotiation and drafting of IP agreements in connection with its 9-digit sale of a line of business to a U.S.-based competitor.
• Represented a U.S. semiconductor company in IP aspects of its transaction with a leading private equity firm and an overseas technology company to form a joint venture for the manufacture and sale of a line of semiconductor products.
• Represented a leading supplier of Internet of Things (IoT) real-time operating system and related software in its acquisition by a competing supplier of IoT software.
• Represented an American brokerage and banking company in its $345M acquisition of a technology-focused securities and investment banking firm that provides equity research on technology and other growth-oriented companies.
• Represented an international software company in its $1.6B acquisition of a business unit of an American data storage company.

Software Licensing

• Represented a leading supplier of real-time operating systems and related software as its primary outside licensing attorney, including a 4-month secondment while the company was between Chief Licensing Counsels.
• Represented a large energy company in a negotiation of an enterprise-wide license for business-critical software.
• Represented a multinational provider of supply, information and care management products for the healthcare industry in its negotiation with a global supplier of information management software tools for an enterprise license of business-critical software.