JosephMelnik (Joe)

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Silicon Valley + 1.650.687.4151

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Joe Melnik's practice is focused on technology licensing, technology commercialization, and other technology-related transactions. Joe counsels clients on complex transactions related to a broad range of technologies including software, semiconductors, energy, data and network security, and consumer devices. He negotiates and structures license agreements, joint ventures, joint development agreements, strategic alliances, services, supply, and various other agreements for domestic and global projects. Joe also advises companies of all sizes on the development and implementation of strategies for maximizing the benefits of technology transactions; advising on intellectual property issues that arise in connection with corporate transactions, such as mergers and acquisitions; and assisting clients in developing domestic and international product commercialization strategies that utilize intellectual property positions to protect and expand market share.

Joe also represents clients in patent litigation, license disputes, and post-grant proceedings. He has successfully represented companies in patent cases relating to a wide variety of technologies, including cryptography, smart cards, biometrics, cellular telephony, SMS (text messaging), computer networking, wireless communications, semiconductors, database technologies, and financial transactions. In addition, he frequently represents companies in high-stakes licensing disputes in a broad range of technology areas and has been lead counsel on numerous inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).

Joe's practice further includes the development and management of patent portfolios, freedom-to-practice opinions, and strategic counseling. In this role, he counsels clients developing robust intellectual property portfolios, mining portfolios for key assets, and managing a company's intellectual capital to maximize commercial benefits while minimizing risks and costs.

Experience

  • ETS acquires PSIJones Day advised Educational Testing Service (ETS) in its acquisition of PSI Services LLC, a global leader in test development and delivery across workforce certification and licensure.
  • SingTel sells Trustwave to The Chertoff GroupJones Day represented Singapore Telecommunications Limited, southeast Asia’s largest telecommunications company, in the sale of Trustwave, a cyber security and managed security services business, to funds affiliated with The Chertoff Group for $205 million. In connection with the sale of Trustwave, Jones Day represented SingTel, as lender, in connection with a unique $195 million senior secured term loan and $40 million unsecured multiple draw term loan facility provided to Trustwave.
  • GreatPoint Ventures leads $5 million funding of DatalogzJones Day advised GreatPoint Ventures in leading the $5 million funding of Datalogz, the pioneer in ending business intelligence (BI) sprawl across Fortune 500 enterprises.
  • Ascension enters into strategic laboratory collaboration with LabcorpJones Day advised Ascension with respect to its strategic alliance with Labcorp whereby Labcorp will manage Ascension’s hospital-based laboratories in 10 states and purchase the assets of the health system’s outreach laboratory business.
  • RIA Advisory receives strategic investment by Avance Investment ManagementJones Day advised RIA Advisory in the strategic investment by Avance Investment Management.
  • Sensata Technologies acquires DynapowerJones Day advised Sensata Technologies (NYSE: ST), a leading industrial technology company and provider of sensor-rich solutions and insights for customers, in connection with its acquisition of Dynapower Company, LLC, a leading provider of energy storage and power conversion systems, from private equity firm Pfingsten Partners for $580 million in cash.
  • DigitalBridge’s DataBank acquires Houston-area data centers from CyrusOneJones Day advised DigitalBridge Group Inc.’s DataBank subsidiary in the $670 million acquisition of four existing data centers in the Houston, TX metro area from CyrusOne.
  • City of Hope acquires Cancer Treatment Centers of AmericaJones Day advised City of Hope, a world-renowned, National Cancer Institute (NCI)-designated comprehensive cancer research and treatment organization, in connection with its acquisition of Cancer Treatment Centers of America, a network of oncology hospitals and outpatient care centers across the United States.
  • Cohesity disposes of six-patent litigation brought by adverse competitor CommvaultJones Day successfully represented Cohesity Inc. ("Cohesity") and obtained dismissal in a six-patent, competitor suit filed by Commvault Systems in April 21, 2020.
  • DraftKings enters landmark licensing agreement to launch gamified NFTs of NFL playersJones Day advised DraftKings Inc. in connection with a landmark licensing agreement with the NFL Players Association for rights to use the name, image, and likeness of NFL players in connection with gamified NFTs (non-fungible tokens).
  • Sempra Energy sells PXiSE Energy SolutionsJones Day advised Sempra Energy in the sale of membership interests in PXiSE Energy Solutions to Yokogawa Electric Corporation.
  • Trustwave sells PCI compliance business to SysnetJones Day advised Trustwave in the $80 million sale of its payment card industry compliance business (SecureTrust and FLEX divisions) to Sysnet Global Solutions.
  • Qubiqle (d/b/a Plate IQ) raises $160 million from FTV CapitalJones Day advised Qubiqle (d/b/a Plate IQ) in the sale of a majority equity stake to FTV Capital for $160 million.
  • Infor sells Enterprise Asset Management business in $2.8 billion carveout saleJones Day advised Infor, a wholly owned subsidiary of Koch Industries, Inc., in the sale of its Enterprise Asset Management business to Hexagon AB for $2.8 billion, consisting of (i) $800 million in cash and (ii) approximately $2 billion of Hexagon’s common stock (HEXA-B.ST).
  • DMI secures strategic investment from OceanSound PartnersJones Day advised DMI in its strategic investment from an affiliate of OceanSound Partners, LP.
  • Sensata Technologies acquires Spear Power SystemsJones Day advised Sensata Technologies in its acquisition of Spear Power Systems, a leader in lithium-ion based energy storage solutions for mission-critical and demanding end user applications.
  • DraftKings launches sports-memorabilia NFT marketplace in U.S.Jones Day is advising DraftKings Inc. on regulatory and legal matters related to the launch of a sports-memorabilia NFT marketplace in the United States.
  • Skyworks Solutions acquires Infrastructure and Automotive business of Silicon Laboratories for $2.75 billionJones Day advised Skyworks Solutions, Inc., an innovator of high-performance analog semiconductors, in connection with its acquisition of the Infrastructure and Automotive business of Silicon Laboratories Inc. (NASDAQ: SLAB), a leading provider of silicon, software, and solutions, in an all-cash asset transaction valued at $2.75 billion.
  • Wabtec acquires Nordco for $400 millionJones Day advised Wabtec Corporation in its $400 million cash acquisition of Nordco, a leading North American supplier of new, rebuilt, and used maintenance of way equipment with a broad product and service portfolio including mobile railcar movers and ultrasonic rail flaw detection technologies, from Greenbriar Equity Group LP.
  • Ansys acquires Phoenix Integration, Inc.Jones Day advised Ansys, Inc. in its acquisition of Phoenix Integration, Inc., a provider of software that enables model-based engineering (MBE) and model-based systems engineering (MBSE) to customers across multiple industries, particularly in the aerospace and defense sectors.
    • View All

    APRIL 2023 Commentary

    Generative AI Generates Excitement—and Copyright Concerns

    April 2023 Alert

    Generative Artificial Intelligence and the Requirements of Open Source Software Licenses

    February 2023 Alert

    "MetaBirkins" Bagged: NFT Creator Found Liable for Trademark Infringement

    September 2022 Alert

    California Attorney General Initiates Novel Investigation Into Potential Health Care Algorithm Bias

    May 2022 Commentary

    NFTs: U.S., EU, and UK Key Trademark Considerations

    April 2022 Commentary

    NFTs: U.S., EU, and UK Key Copyright Considerations

    April 2020 White Paper

    Quick Reference Guide: Compulsory Patent Licensing During COVID-19 Crisis

    November 2018 White Paper

    Blockchain for Business

    October 2018 Commentary

    Game Changer for Cryptocurrency in Germany? Court Holds No License Required to Trade Bitcoins

    September 2018 Jones Day Publications

    Blockchain for Business Lawyers, multiple authors and editors, American Bar Association
    View All

    Speaking Engagements

    • December 3, 2009
      Intellectual Property at Home and Abroad

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