Technology Law

Whyte Hirschboeck Dudek S.C. has one of the Midwest's leading technology law practices. We address the unique challenges inherent in contracting and claims resolution processes involving the design, development, implementation, operation and maintenance of complex information technology, telecommunications and e-commerce solutions, in addition to providing tailored litigation and regulatory solutions for our clients. We are knowledgeable and experienced in transactional, administrative, legislative and governmental approval processes.

 

By taking into account the legal and regulatory ramifications of business decisions, and proactively applying our in-depth knowledge of the law and our clients’ businesses, we not only keep our clients compliant with laws and regulations, but minimize risks of conflict, litigation, or government interference with business objectives. Our first step is always to learn as much as we can about our client’s culture, challenges and goals.

 

Our Technology Law Team is well-positioned to provide expert counsel at efficient rates on legal matters throughout the United States in the areas of technology law, litigation and intellectual property litigation, and are supported by WHD attorneys practicing in more than 50 industry and specialty areas.

 

Our team differs from most other law firms in that many of our team members are not just attorneys, but also have industry experience or advanced degrees in information technology. Our team leader earned a Masters in Technology Degree from Purdue University while maintaining a full legal practice, and previously worked as a software designer and programmer for Accenture in Chicago. Several members of the team have received recognition for their experience in technology law, such as inclusion in the 2012 Top Rated Lawyers Annual Guide to Technology Law for Corporate Counsel and The American Lawyer magazines.

 

Technology Transactions
WHD serves as National Technology Counsel™ to some of North America’s most respected companies. In this role, WHD has successfully negotiated and closed software, information technology, and outsourcing deals with an aggregate transaction value of more than $1 billion and counting. Clients routinely turn to WHD’s Technology Law Team for sophisticated legal advice in the structuring, negotiating, and closing of transactions involving the purchase, sale, leasing, licensing, or outsourcing of information technology.

 

Our attorneys’ experience in technology transactions is broad-based and deep, representing both purchasers and sellers in commercial deals. We routinely advise clients in standard technology transactions involving sourcing and procurement of software and IT infrastructure, including negotiation of traditional software licenses, as well as structuring of deals involving cloud computing and software as a service, infrastructure as a service, and platform as a service. Our attorneys also advise clients in progressive, sophisticated transactions involving joint development of new technology, formation of joint ventures to commercialize new technologies, and complex technology outsourcing as well as (both onshore and offshore) business process outsourcing. Our team, in combination with our Corporate Transactions Team, also serves as general counsel to start-up and emerging technology companies and advises on matters of corporate formation, corporate governance, private investment and securities, and development of supply chain, marketing, and sales channels.

Technology Litigation
The Technology Law Team works with insurance and technology companies and software developers in all forms of dispute resolution. We represent a diverse group of state and national clients as legal counselors in an array of substantive legal areas and in litigation. Our integrated, multidisciplinary Technology Law and Business & Commercial Litigation teams include lawyers with in-house experience as technology counsel for major corporations.


Our attorneys address the unique challenges inherent in contracting and claims resolution processes involving the design, development, implementation, operation and maintenance of complex information technology, telecommunications and e-commerce solutions. We have graduate level technology knowledge as well as experience in programming, systems analyses, software engineering and application development. In short, we speak our clients’ language.

 

Our attorneys regularly represent clients in federal and state litigation, arbitration, mediation, and settlement negotiations arising from failed implementations, license disputes, infringement claims, false advertising, unfair competition claims, trade secret theft, infringement, misappropriation claims, computer crimes, license audits, and information security and data breaches. We counsel clients in nearly every industry sector, including technology, e-commerce, software, telecommunications, health care, life sciences, biochemistry, mechanical and electrical engineering, medical devices, financial services, insurance, manufacturing, transportation, energy, higher education, food processing, governmental entities, and nonprofits.

 

Beyond the client work the team performs, members of our team founded the Wisconsin IT Leadership Association (WITLA), as well as the State Bar of Wisconsin’s Technology Law Committee of its Business Law Section. We also serve as American Arbitration Association arbitrators, including on the National Technology Panel.

As a member of ALFA International and the International Business Law Consortium (IBLC), we are able to supplement our skills by offering clients the enhanced quality and efficiency that comes from the collective knowledge of a global network of independent law firms, tax advisers and business consultancies. Additionally, our Intellectual Property Practice Group’s informal global network of more than 100 patent lawyers has been an excellent and reliable resource when we have needed to prosecute patents around the world.

Regulatory & Compliance
Our attorneys assist clients with the implementation and evaluation of a wide variety of governance programs relating to the use and management of information and technology.

  • Open Source Software: We provide guidance to companies so they can safely incorporate open source software into their commercial products without running afoul of complicated licensing restrictions.
  • Social Media Policies and Programs: We understand how valuable social media platforms, interactive websites, blogs and review programs are to our clients. We are also keenly familiar with the potential risks involved with the use of such tools. As such, we are skilled at counseling our clients and assisting them with the development and implementation of social media policies and related agreements.
  • Privacy: We are familiar with the growing conflict between our “share society” and individual consumer’s demands for privacy over their personal information. We stay abreast of all federal and state regulations, as well as guidelines issued by the Federal Trade Commission (FTC). We also closely watch the developments in the privacy arena abroad. This allows us to counsel our clients on how to use information and on what steps to take to protect information collected. We are also highly experienced with preparing and helping our clients understand and comply with privacy policies and technology terms of use.

Intellectual Property Protection
We recognize that software and business method protection are key concerns for technology companies, financial institutions, and many other businesses. We are skilled at providing guidance on the many choices available for protecting these innovations so that our clients may obtain the most comprehensive protection for their valuable technology. From the beginning of innovation to the end, we help prevent companies from making crucial missteps that can derail even the most innovative endeavors. Our experience includes evaluating new innovations to determine if the most encompassing protection should be sought through the patent system, a trade secret protection program, or copyright or trademark registration.

  • Patents: We provide counsel that includes assessing patentability, opining on potential infringement, evaluating enforcement options, and the successful acquisition and transfer of patent rights. The myriad of precedential Supreme Court and Federal Court opinions related to software and business patent methods has established a virtual minefield of issues that must be carefully considered when seeking protection for technological innovations. A thorough understanding of these opinions provides us with key strategies for seeking the broadest protection, while maintaining safeguards to minimize the risk of losing some or all protection.

    We frequently file international patent applications under the Patent Cooperation Treaty (PCT). These applications serve as a vehicle for the later filing of national patent applications. In addition, through our expansive network of associated foreign law firms, we are positioned to assist with the filing of national patent applications in more than 100 countries outside the United States.
  • Trade Secrets: We are highly skilled at assisting companies with the implementation and enforcement of comprehensive trade secret protection programs. This involves evaluating how confidential information is protected, and reviewing and implementing non-disclosure and non-compete agreements with both employees and outside contractors. We also assist our clients with developing overall trade secret policies. All of these tools not only provide immediate protection of our client’s valuable assets, but also positions them to maintain those protections if they are ever questioned in litigation.
  • Copyrights: Copyright protection is valuable, long lasting and inexpensive. However, it is all too easy for companies and individuals to make critical mistakes that may jeopardize copyright ownership and protection. We assist our clients with work made for hire and assignment agreements, and in preparing and filing copyright applications. We are also skilled at evaluating business licensing needs and in preparing and implementing comprehensive copyright compliance programs to reduce the risk of infringement and liability.
  • Trademarks: We have significant experience in identifying, protecting, maintaining and enforcing trademark rights. We counsel a wide variety of clients on all of their trademark, trade dress and product configuration requirements to ensure they obtain the most comprehensive protection.

Recognition
The work of our Technology Law and Business & Commercial Litigation teams has gained the firm the following recognitions:

  • 2012 Top Rated Lawyers Annual Guide to Technology Law for Corporate Counsel and The American Lawyer magazines.
  • Wisconsin Super Lawyers® – Named WHD the 2011 Top Large Law Firm for Litigation in Wisconsin.
  • Chambers USA 2011 – Ranked WHD’s Litigation Team (Intellectual Property & General Commercial) as among the best in Wisconsin in its Chambers USA 2011 guide.
  • ALM, An Integrated Media Company – Recognized by Goodrich Corporation as a 2012 Go-To Law Firm for Litigation. WHD is one of an elite group of firms that delivers exceptional work for the in-house legal departments at the Fortune 500.

Representative Engagements

  • Represented subsidiary of NYSE company in federal court in pursuing multimillion-dollar claims against third-party integrator in failed ERP implementation case, resulting in favorable settlement and assistance for client in transitioning to alternate provider.
  • Represented international supply chain logistics software developer in federal court actions with customers regarding software maintenance and support contracts, including obtaining summary judgment on claims of breach of contract and recovering in jury trial full damages permitted under license agreement.
  • Recovered damages and attorneys’ fees for customer relationship management software developer in arbitrations with customers.
  • Defended company in class action litigation arising from a data breach.
  • Represented large grocery retailer in litigation efforts to identify “John Doe” defendant anonymously disclosing proprietary and confidential information on the Internet, as well as subsequent efforts to deter further disclosures.
  • Represented telecommunications system provider in state court dispute over complex software system implementation.
  • Represented provider of electronic funds transfer processing services and products in mediation with financial institution regarding timeliness of approval of ATM transactions requiring Internet access to authorization engine through third-party middleware vendor.
  • Obtained breach of contract arbitration award for Internet-based health services billing and financial support company against physicians group and successfully defended company against counterclaims alleging inadequate billing and computer support services.
  • Represented national bank’s “back office” brokerage support services in resolving claims against competing brokerage and former IT consultant for raiding client’s project management staff.
  • Defended electronic financial services company in a million-dollar arbitration proceeding involving allegations related to data security and the Gramm-Leach-Bliley Act.
  • Negotiated settlement between software company and its corporate licensee in dispute involving multimillion-dollar complex software system implementation.
  • Represented companies subject to software infringement audits by the Business Software Alliance.
  • Defended website development company in state court litigation involving allegations of computer crimes and domain name and website conversion.
  • Assisted company whose website was hijacked by its website developer in regaining control over its website and represented that company in related state court litigation.
  • Assisted service corporation in regaining control over its stolen domain names.
  • Defended company in state court litigation involving allegations of state and federal computer crimes and trade secret theft.
  • Obtained dismissal of class action claims against corporation where class asserted violations of the Unsolicited Commercial Email Act.
  • Obtained favorable settlement for corporate software licensee in multimillion-dollar dispute in federal court involving complex software system implementation.
  • Defended software company in multimillion-dollar arbitration proceeding involving complex software system implementation.
  • Represented financial services company in litigation efforts to enjoin former employee from hacking into company’s customer Intranet.
  • Negotiating a $200 million software license and enterprise technology and services agreement with SAP and IBM for a client with operations across the globe.
  • Serving as primary counsel for an early stage software as a service company that licenses a hosted software platform to Fortune 1000 companies for use in video interviewing and hiring, including representation of the company in drafting of all underlying software and service agreements as well as matters related to corporate structuring, governance and completion of three rounds of private investment totaling $10 million in value.
  • Serving as primary counsel for an early stage software developer and Internet hosting company with a proprietary software platform for conducting the purchase and sale of consumer goods, including representation of the company in drafting of all underlying software and service agreements as well as matters related to corporate formation, corporate governance and completion of a round of initial private investment.
  • Serving as outside technology counsel to a national financial services and insurance company in the managing the drafting and negotiating of nearly 100 software license, software support, and master services agreements with vendors such as IBM, Oracle, Reuters, Wipro and InfoSys.
  • Serving as outside technology counsel to an international logistics software developer in the drafting and enforcement of master technology agreements, implementation agreements, maintenance and support agreements, reseller agreements, joint development agreements, license agreements, and strategic alliance agreements with customers such as duPont, Sears, Target, and Pepperidge Farms.
  • Serving as outside technology counsel for a major global medical technologies company in negotiating multinational contracts such as strategic alliance, joint development, joint venture, professional services, consulting, software licensing distribution, and purchasing agreements, including contracts involving suppliers in Israel, Hong Kong, Hungary, France and Germany.
  • Serving as lead counsel for the largest privately owned company in the United States in connection with software development and business process outsourcing of accounting and finance operations to four foreign service providers located in Europe, Asia, South America and North America.