IT audits: IT audits can sometimes be contentious, and certain companies in the IT industry see their audit arms as revenue-generating operations. The consequence, weaponized IT audits, often come as a surprise to licensee—many of whom are global brands. Li blends his background in IP litigation, commercial litigation, and technology transactions to formulate practical and common-sense solutions for organizations facing untenable and unreasonable audit demands. Here are two examples from 2021:
Lead counsel for global brand specializing in biometric software in evaluating software licensor’s claims of non-compliance with licensing terms. Pending.
Lead counsel for global semiconductor company in evaluating IP licensor’s claims of non-compliance with terms not expressly written into license. Dispute resolved on confidential basis after a year-long audit and negotiation process.
Lead counsel for the North Texas Tollway Authority in its negotiations to replace a major back office (IT) system that drives over $1.3 billion in annual NTTA revenues. The Firm was selected by the client (after a competitive selection process) to structure and lead negotiations on behalf of a team that included AmLaw 100 and AmLaw 200 firms. The negotiations resulted in expansive operational and functional warranties, 10 years of warranty coverage, price and schedule assurances, and protection for potential losses of revenue.
Lead counsel for Fortune 100 company in multiple strategic IT transactions, including negotiations with GE, Airbus, Red Hat, IBM, SAP, and Oracle.
Lead counsel for clients in the aviation, metals, hardware, and automotive industries in multiple information technology (IT) transactions and enterprise resource planning (ERP) implementations. These transactions at times spanned multiple continents, and posed logistical, managerial, and legal challenges. In one transaction the concessions that Li secured from the ERP implementer—one of the top 50 technology companies in the world—later led the vendor to seek our advice on negotiation strategies.
Lead counsel for multiple additional governmental agencies, including the Dallas Area Rapid Transit and Atlanta Housing, on their IT contract negotiations.
Advise multiple manufacturing clients that dispute the propriety of attempts by a major ERP vendor to assess license fees for claims of indirect-access.
Lead counsel for major electronics companies in evaluating compliance with existing licenses and technology contracts, and to structure and negotiate dispute resolutions without litigation.
Lead counsel for an overseas semiconductor company facing royalty demands from the holder of a standard essential portfolio (4G technology). The patent holder walked away without receiving any payment.
Lead counsel for semiconductor, electronics and financial clients in negotiations against operating companies such as Freescale, Nokia and Andrea Electronics, against non-practicing entities such as Innovatio, Washington Research Foundation, Vectis, Round Rock, Daniel Flamm, IPXI, and IPValue / Future Link Systems.