JosephMelnik (Joe)

Partner

(T) + 1.650.687.4151

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, 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 IPR proceedings before the Patent Trial and Appeal Board.

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

  • Modern Media Acquisition completes merger agreement with Akazoo Ltd.Jones Day advised Modern Media Acquisition Corp. ("MMDM"), a special purpose acquisition company, in its business combination with Akazoo Limited, a U.K.- based digital music streaming platform specializing in emerging markets.
  • Educational Testing Service invests $2 million into LearnLaunch-operated, ETS-sponsored accelerator for education start-upsJones Day advised Educational Testing Service in its $2 million investment into a LearnLaunch-operated, ETS-sponsored accelerator for education start-ups.
  • Evidera acquires MedimixJones Day advised Evidera, a business unit of Pharmaceutical Product Development, LLC, in its acquisition of Medimix International, a global technology company providing real-world evidence (RWE) insights and information to the pharmaceutical, diagnostic, and medical device industries.
  • Drive.ai sold to Apple Inc.Jones Day advised Drive.ai in the sale of substantially all of its assets to Apple Inc.
  • KKR completes investment in OneStream SoftwareJones Day advised Kohlberg, Kravis & Roberts & Co. L.P. in connection with its investment in OneStream Software LLC, a leading provider of cloud or on-premise Corporate Performance Management solutions for mid-sized to large enterprises, in a transaction that values the privately held company at more than $1 billion.
  • NVIDIA to acquire Mellanox Technologies for $6.9 billionJones Day is advising NVIDIA Corporation in its acquisition of Mellanox Technologies, Ltd., an Israel-based leading supplier of end-to-end InfiniBand and Ethernet interconnect solutions and services for servers and storage.
  • Cylance acquired by BlackBerry for $1.4 billionJones Day advised Cylance, an artificial intelligence and cybersecurity leader, in its $1.4 billion acquisition by BlackBerry Limited, plus the assumption of unvested employee incentive awards.
  • Adtalem Global Education sells DeVry UniversityJones Day advised Adtalem Global Education in the sale of DeVry University and its Keller Graduate School of Management to Cogswell Education, LLC, a company with significant experience in higher education.
  • Oclaro sold to Lumentum for $1.8 billion in cash and stockJones Day advised Oclaro, Inc. in its $1.8 billion acquisition by Lumentum Holdings Inc.
  • City of Hope collaborates with Intervention Insights to advance precision medicine in oncologyJones Day advised City of Hope, a world-renowned independent cancer research and treatment center, on a collaboration with Intervention Insights to advance the appropriate use of precision medicine in oncology.
  • Hitachi Vantara acquires REAN CloudJones Day advised Hitachi Vantara in its acquisition of REAN Cloud LLC, a global cloud systems integrator, managed services provider and solutions developer of cloud-native applications across big data, machine learning and emerging internet of things (IoT) spaces.
  • Compass Bank obtains dismissal with prejudice against patent infringement claims brought by Intellectual VenturesJones Day successfully represented Compass Bank in a patent infringement action brought by the non-practicing entity Intellectual Ventures II LLC relating to online banking services.
  • Advantage Solutions acquires Jun GroupJones Day advised Advantage Solutions on its acquisition of Jun Group, an industry-leading mobile video advertising company.
  • Sempra Energy unit PXiSE Energy completes equity financing with Mitsui & Co.Jones Day advised Sempra Energy in connection with the issuance by its subsidiary, PXiSE Energy Solutions, LLC, of up to a 20 percent equity investment to Mitsui & Co., Ltd., as well as the negotiation and entering in of a strategic collaboration agreement for the development and sale of PXiSE's technology.
  • Synopsys reaches agreement with Mentor Graphics in competitor patent caseJones Day served as lead trial counsel for Synopsys Inc. in competitor patent litigation against Mentor Graphics Corporation following the Federal Circuit’s remand of the case to the district court.
  • Orange invests in SoundHoundJones Day represented Orange, S.A. in connection with its investment in a $100 million equity financing of SoundHound, a developer of voice-enabled AI and conversational intelligence technologies.
  • Cardinal Health sells its Cardinal Health China distribution business to Shanghai Pharmaceuticals for $1.2 billionJones Day advised Cardinal Health in the $1.2 billion sale of its Cardinal Health China distribution business to Shanghai Pharmaceuticals Holding Co., Ltd.
  • Dignity Health and Select Medical combine Concentra and U.S. HealthWorks for $753 millionJones Day advised Dignity Health in its $753 million sale of its U.S. HealthWorks, Inc. subsidiary to Concentra Group Holdings, LLC.
  • Ivalua acquires DirectworksJones Day advised Ivalua, a global provider of spend management solutions assisting clients in procurement, sourcing, and supplier risk management, in its acquisition of Directworks, a Pittsburgh-based developer of cloud-based logistics management software.
  • Changchun High & New Technology Industries Group invests in Rani Therapeutics and negotiates collaboration agreement with RaniJones Day represented Changchun High & New Technology Industries Group Inc., a manufacturer of biopharmaceuticals and Chinese traditional medicines, in connection with its purchase of Series D Convertible Preferred Stock in a private placement by Rani Therapeutics and negotiation of a collaboration agreement with Rani.
  • Speaking Engagements

    • December 3, 2009
      Intellectual Property at Home and Abroad
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