Kenneth L. Johnson

Counsel

Practice Description

Kenneth L. Johnson has advised a variety of publicly and privately held companies, ranging from emerging growth companies to leading financial services firms, on a broad array of intellectual property (IP), technology and green energy matters. His practice focuses on:

• Procurement, management and licensing of IP assets
• Complex IP/technology transactions
• High-stakes IP/technology litigation
• Business-focused IP support for corporate transactions

Mr. Johnson's experience includes serving as Chief Patent Counsel for Credit Suisse, where he reinvigorated the patent program and realigned it with the business needs of the bank. His efforts resulted in a significant increase in the number of patents filed, and helped create one of Credit Suisse's first technology spin-outs, the revenues from which will help offset the costs typically associated with the IT back-office function.

Mr. Johnson's experience in green energy and technology includes carbon financing and trading. For example, Mr. Johnson provided IP advice and counseling to a client in connection with their development of a first-of-its-kind structured financial product for the sale of emissions credits from a portfolio of CDM projects.

Mr. Johnson's over 15 years of experience in IP and technology law also includes practicing at several prominent law firms, most notably, as a partner at Brobeck, Phleger & Harrison LLP. There he counseled emerging growth and established companies on various business-critical IP and technology matters including: IP procurement and enforcement, corporate partnering agreements, IP licensing and technology transactions, corporate finance and capital markets, DMCA, privacy and open source.

Representative Matters

• Goldman Sachs Co. in connection with a joint venture for providing FX settlement and clearing services. 
• Apollo Management, L.P., a leading private equity firm in connection with a $2B "going-private" acquisition of AMC Entertainment, Inc., then later in connection with the merger of AMC with Loews Cineplex Entertainment, Inc.
• Bank of New York Mellon in connection with its acquisition of certain assets of Sonic Financial Technologies, then the target of a closely watched patent infringement dispute in the financial services industry.
• Pirelli Cable Corp. v. Ciena Corp. (D. Del): Represented Pirelli in a complex patent dispute involving four district court cases and an ITC action relating to DWMD technology. Case settled on terms that were favorable to the client.
• MGM Studios Inc. v. Grokster, Ltd. (C.D. Cal): Represented Streamcast Networks, the creator of Morpheus peer-to-peer software, in a high-profile copyright trial. The case was won by our client on summary judgment; affirmed on appeal by the Ninth Circuit; but ultimately overturned by the U.S. Supreme Court.
• Cap Gemini SaS, a global consulting firm, in connection with the sale of its North American health practice to a competitor.
• Bank of New York Mellon in connection with a software license, development and strategic collaboration agreement.
• Bookham Technology plc, a British optical components manufacturer, in connection with its acquisition of the optical components business of a major multinational telecommunications equipment manufacturer, including related license, supply and development agreements.
• AudiCodes, Inc., an Isreali telecommunications equipment manufacturer, in connection with its acquisition of the media server business of a major multinational telecommunications equipment manufacturer, including related license, supply and development agreements.
• Foster Wheeler Corporation, a global engineering/project management contractor and equipment supplier to the power industry, in connection with a comprehensive review of their IP portfolio in preparation for several possible business transactions.
• Chromalloy Gas Turbine Corp. v. United Technologies Corp. (D.Del): Represented Chromalloy in a complex patent, trade secret and license dispute with a global aerospace/defense contractor relating to gas turbine manufacturing technology.
• TradeOut.com, then an online marketplace for excess business inventory, in its strategic alliance with GE Capital Corporation relating to use and optimization of the TradeOut platform for sale of GE Capital's off-lease products.
• Jupiter Media Metrix, then a leading market research and consulting firm, in connection with various leading-edge privacy, security and technology matters concerning their Internet audience and measurement services.

Activities and Affiliations

Speeches and Events