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Communications and data privacy compliance for a leading global technology provider

Advising on communications regulatory, privacy, and law enforcement assistance obligations in more than 85 countries related to the launch of cloud-based unified communications services for organizations and businesses. (Ongoing)

Defense of software implementer

Defending global information technology company in ongoing litigation regarding its implementation of software suite for international foodservice company. (Fresno Cnty. (Cal.) Super. Ct.)

Government contracts counseling

Counseling of government contractor on Federal Acquisition Regulations compliance and contracting issues relating to the sale of COTS software and associated services, including issues relating to data rights and license agreements. (Ongoing)

Technology licensing

Assisting clients in securing rights to intellectual property from universities and private parties; assist clients in licensing of intellectual property for commercialization. (Ongoing)

Counseling for various technology companies*

Advised various companies regarding protection of intellectual property, including licensing and terms of use agreements. (2010-2014)

Software development contract litigation

Represented large software company in contract dispute relating to online game development. (2012)

Software Rights Archive, LLC v. Microsoft

Defense of Microsoft in patent infringement suit involving indexing, crawling, ranking, and service of search results and advertisements in response to end-user keyword queries. Settled case favorably shortly after service of extensive invalidity contentions (W.D. Wash. 2012)

Kelley, et al. v. Microsoft Corporation

Defended Microsoft in litigation challenging the 'Windows Vista Capable' marketing program, which preceded the release of the Microsoft Windows Vista operating system in early 2007. Class initially certified, decertified after the close of discovery in February 2009, and resolved after appeal. (W.D. Wash. 2011) Read more

Majority ownership interest acquisition

Redemption of 50 percent owner’s interests in international software distribution and service business. (2011)

Sale of business for Geospiza, Inc.

Represented Geospiza Inc., a bioinformatics company, in its merger with PerkinElmer. (2011)

Software development contract litigation

Represented large software company in breach of contract dispute relating to product royalties and product maintenance fees. (2011)

Digital distribution and privacy compliance for online content provider

Advised on distribution of smartphone app and European privacy compliance for an online specialty magazine and auction site. (2010)

Industry joint venture for Cardiovascular Decisions

Represented a medical device company in a strategic product and technology development license of its cardiac medical device software to a major corporate partner. (2010)

Industry joint venture for Previser Corporation

Represented developer of an oral disease analysis software product to the dental sector in a strategic distribution agreement with a major retail health care conglomerate. (2010)

Kount Inc. v. iovation Inc.

Lead counsel for security software owner iovation defending against patent infringement claims brought by a competitor in the District of Oregon. The claims were settled after a magistrate judge entered summary judgment for iovation. (2010)

Open source software services agreement for privately held software services company*

Drafted agreement to become the exclusive provider of software development and maintenance services for a widely used software application distributed under a French copyleft software license. (2010)

Sale of business for Mobiata, LLC

Represented Mobiata LLC, a wireless travel application developer and provider, in a sale to Expedia, Inc., structured as a reverse triangular merger. (2010) 

Software patent litigation

Represented software company defending against patent infringement claims relating to encryption and authentication technologies. (2010)

Vendor dispute

Assisted Amazon in resolving a dispute with a software development vendor. (2010)

Digi-Net Technologies, Inc. v. Talisma Corp.

Defended software company against claim for infringement of a patent involving Internet chat system for providing customer service to website users. Case settled successfully. (W.D. Wash. 2009)

JSA Technologies, Inc. v. Informed Decisions Corp. d/b/a CASHNet

Defended payment processing software company against claim for infringement of a patent involving Internet payment and value transfer systems. After a crowd sourcing search uncovered new prior art, case settled favorably. (D. Del. 2009)

Privacy and computer fraud class action

Represented broadband service provider against putative class action claims for alleged violations of the federal Electronic Communications Privacy Act and Computer Fraud and Abuse Act, as well as California’s Invasion of Privacy Act and Computer Crime Law based on the supposed unauthorized acquisition and use of personal information. The plaintiffs dismissed our client after filing but before the hearing on our motion to dismiss. (N.D. Cal.)

Acquisition for Trimble Navigation

Acquisition of GPS distributor. (2008)

ProteoTech, Inc. v. Unicity International, Inc.

Represented plaintiff, owner of patent on nutraceutical product, in patent and trademark infringement litigation against former licensee. Won partial summary judgment on issue of first impression with regard to sub-licensing of non-exclusive license agreements; case settled thereafter. (W.D. Wash. 2008) 

Sale of business for Sonotech, Inc.

Representation of Sonotech, Inc., a medical products manufacturer, in its acquisition by Illinois Tool Works Inc. (2008)

Transportation Institute v. Seattle PC Magic

Represented Seattle PC Magic in Telephone Consumer Protection Act (TCPA) and Consumer Protection Act (CPA) class action related to faxes. (King Cnty. (Wash.) Super. Ct. 2008)

AAA arbitration for large real estate consultant

Represented client in AAA fee dispute arbitration in Boston. (2007)

Acquisition of business for Big Fish Games, Inc.

Represented the client in multiple rounds of venture capital financing and in acquisitions in the casual game space. (2007)

Acquisition of business for CWR1 LLC

Purchase of all outstanding stock of UIEvolution, Inc. (2007)

Corporate finance for Confirma, Inc.

Represented a medical device software developer in a Series C Preferred Stock financing by Telegraph Hill Partners; a venture loan from Silicon Valley Bank and Oxford Finance Corporation; convertible debt financing from Versant Ventures, Prism Ventures, Fluke Ventures, and Northwest Venture Partners; and a strategic alliance with GE Healthcare. (2007)

Global Crossing Telecommunications, Inc. v. Metrophones Telecommunications, Inc.

Represented Global Crossing in case involving enforceability of FCC regulations through private rights of action. 550 U.S. 45. (2007) Read more

Manesh v. Tokyo Electron American

Summary judgment granted in workers' compensation discrimination case. (D. Or. 2007)

Product liability counseling for Vulcan Inc.

Managed all aspects of new product launch for Vulcan Inc.'s Flip Start computer including labels, warnings, and supply chain contracts. (2007)

Sale of business for Healia

Represented medical device software developer in its sale to Meredith Corp. (2007)

Sale of business for InstruMed

Sale of medical device equipment manufacturer to Stryker Corp. (2007)

Securities transaction for Previser

Represented medical device software company in a Series A preferred stock financing from Ignition Partners. (2007)

Timeline, Inc. v. ProClarity Corp. and Microsoft Corp.

Represented Microsoft and one of its subsidiaries in patent-infringement and breach of contract litigation. Summary judgment obtained in favor of Microsoft after extensive e-discovery; patent infringement claims against subsidiary settled hours before the start of the trial. (W.D. Wash. 2007)

Amdocs acquisition of QPass

Represented Amdocs, a provider of software and services for billing, CRM, and OSS systems, in its acquisition of QPass, which provides infrastructure for electronic payments. (2006)

Dispute with software vendor for mortgage insurance company

Represented software customer in a dispute with vendor concerning a custom accounting software project. The case ultimately settled prior to litigation, with the vendor agreeing to fix the software and also implement modifications at no additional cost.

Freed v. ISITE et al.

Represented client in a 'bet the company' complex commercial matter. Jury returned a verdict for our client on all counter-claims against plaintiff and on all but one claim resulting in a net-positive judgment in client's favor. (D. Or. 2006)

In re Dynamic Random Access Memory (DRAM)

Represented Silicon Electronics, Inc. as an opt-out direct purchaser. Case No. 02 01486-PJH (2006)

Mergers and acquisitions for Nextweb, Inc.

Sale to Covad Communications. (2006)

Securities transaction for Verdiem Corporation

Series D preferred stock financing of energy efficiency software developer by Catamount Ventures. (2006)

Securities transaction for ICO North America, Inc.

$650 million convertible senior secured notes financing. (2005)

Asset acquisition for ICO Global Communications, Inc.

Acquisition of global communications and satellite assets of Globalstar, LP. (2004)

Roque v. Applied Materials

Motion to dismiss and compel arbitration granted in employment discrimination case. WL 1212110 (D. Or. 2004)

Anesthesiologists Associated Inc. v. ProDX

Represented plaintiff medical billing company against software developer for breach of contract and negligence. Jury verdict for plaintiff. (Multnomah Cnty. (Or.) Cir. Ct. 2006)

Domain name proceedings and litigation for various companies*

Handled domain name disputes, UDRP actions, and anti-cybersquatting litigation for numerous clients – including Internet service providers, financial services companies, , motion picture studio, and online entertainment business.

Freight forwarding agreements

Developed simplified master agreement for international multimodal (air, ocean, rail, and truck) freight forwarding services for e-commerce client by synthesizing several mode-specific and region-specific form agreements and providing recommendations for changes to limitation of liability and lien waiver terms.

Freight forwarding RFPs

Reviewed and identified ambiguities and inaccuracies in freight forwarding RFP documents and advised business stakeholders on updates to such documents to help accurately describe desired third-party services and avoid inadvertently assuming unintended obligations to RFP participants. Developed summaries of RFP participant responses to proposed freight forwarding agreement to assist business stakeholders with comprehensively evaluating RFP participant bids.

Internet gambling issues

Advise on Internet gambling issues, and impact on sweepstakes, contests, casual gaming, fantasy sports, advertising, and media activities.

IoT reseller agreement

Harmonized terms between outbound reseller agreement and inbound subscription agreement to enable telecommunications client’s customer to bundle and resell client’s wireless services with the customer’s custom internet of things platform, and client to resell customer’s IoT services. 

Joint venture for Microsoft*

Represented Microsoft in forming the Caradigm joint venture with GE Healthcare.

Licensing agreements for Microsoft Corporation

License agreements with Psytechnics and Deutsche Telecom.

New media content distribution transactions*

On behalf of content owners, handled deals for and advised on distribution of video content and creation of branded channels on Internet platforms such as Hulu, Joost, and AOL Video.

Purchase and sales agreements for self-driving car parts

Advised car parts manufacturer with a long-term supply agreement with aspiring manufacturer of self-driving cars on strategy for mitigating previously assumed product warranty risks through warranty, indemnity, title transfer, and inventory management terms in purchase agreement with component supplier and amendment to sales agreement with manufacturer.

Transportation agreements

Negotiated transportation agreements and amendments with various types of asset-based carriers for e-commerce client to adopt new rates for existing arrangements, memorialized cost-sharing commitments for the implementation of new arrangements, and remediated gaps in legacy agreements.

Warehousing agreements

Developed bailment and inventory management agreement for seasonal outsourced overflow inventory storage. Supported annual negotiations with expanding group of third-party logistics service providers. Developed playbook and fallbacks guide to streamline negotiation process.
* Denotes experience completed at a prior firm
Kraig Baker discusses Seattle's technology industry
Law Firm of the Year in Communications