Ken D. Kumayama

In honor of Mr. Kumayama’s work, The Daily Journal has recognized him several times as one of the leading technology lawyers in California, including as a 2023-2025 Top Intellectual Property Lawyer, a 2022 Top Cybersecurity Lawyer and previously one of the state’s Top Artificial Intelligence Lawyers. He was also honored as a 2023 Technology MVP by Law360 and has been selected as one of Lawdragon’s 100 Leading AI & Legal Tech Advisors, in addition to being named to Chambers USA, The Best Lawyers in America and Intellectual Asset Management’s Strategy 300 list. He was a key member of the deal teams that received California Lawyer Attorneys of the Year (CLAY) Awards in recognition of innovative work on behalf of: Livongo Health in its $18.5 billion acquisition by Teladoc Health (2021), Intel Corporation in its $15.3 billion acquisition of Mobileye, N.V. (2018) and Broadcom Corporation in its $37 billion acquisition by Avago Technologies (2016).

He represents clients in a range of technology and commercial transactions relating to the ownership, protection and exploitation of intellectual property, including IP monetization strategies, development and license agreements, co-development agreements, pharmaceutical collaboration agreements, patent and other technology license agreements, trademark and copyright license agreements, and patent and other intellectual property asset sales and acquisitions. He also counsels clients in a broad range of industries, such as in adtech, fintech and digital health, on cybersecurity- and privacy-related matters, including with respect to the California Consumer Privacy Act, Gramm-Leach-Bliley Act, data rights, and topics relating to generative AI and other forms of artificial intelligence.

In addition to his transactional work, Mr. Kumayama has experience in many other types of patent- and IP-related matters, including investigating and rendering freedom-to-operate, validity and non-infringement opinions; engaging in patent landscape analyses and assessing patent infringement risk; evaluating the strength of, and encumbrances on, patent portfolios; and counseling clients on patent and other strategic IP issues. He regularly speaks on topics such as patent acquisitions, artificial intelligence, open source software and M&A due diligence. Mr. Kumayama’s pre-law studies, academic research and job experience included theoretical chemistry, geophysics, bioinformatics and system administration of a Linux network, requiring a comprehensive knowledge of mathematics, computer programming (including in C++, perl and FORTRAN) and the sciences. He is fluent in Japanese and worked for more than four years in Japan, both as an attorney at a Japanese law firm and for a Japanese company. He has written about patent monetization and Internet privacy issues and has spoken, in Japanese and English, on topics such as trends in e-discovery and patent exhaustion.

Significant matters in which Mr. Kumayama has been involved include:

Semiconductors

• Entegris, Inc. in its $6.5 billion acquisition of CMC Materials, Inc.
• Intel Corporation in its:
  • $15.3 billion acquisition of Mobileye, N.V.
  • $4.2 billion spin-off and joint venture with TPG Capital, L.P. to form the independent cybersecurity company McAfee
  • spin-off of its Wind River subsidiary to TPG Capital, L.P.
  • sale of a majority of its smartphone business to Apple for $1 billion
  • sale of its home gateway platform division to MaxLinear, Inc.
• Coherent in its initially announced $5.7 billion sale to Lumentum, followed by Coherent’s subsequent responses to competing acquisition proposals from MKS Instruments, II-VI and Lumentum in a three-party bidding war culminating in Coherent’s $7.1 billion sale to II-VI
• NXP Semiconductors N.V. in its:
  • $1.76 billion acquisition of Marvell Technology Group Ltd.’s Wi-Fi Bluetooth connectivity assets
  • $625 million acquisition of TTTech Auto, an Austria-based provider of unique safety-critical systems and middleware for software-defined vehicles
• ON Semiconductor in its pending $115 million acquisition of the Silicon Carbide Junction Field-Effect Transistor (SiC JFET) technology business from Qorvo
• Broadcom in numerous transactions, including its:
  • $37 billion sale to Avago Technologies Ltd.
  • $164 million acquisition of the wireless modem business of Renesas Electronics Corp.
  • $195 million acquisition of BroadLight, Inc.
  • $3.7 billion acquisition of NetLogic Microsystems, Inc.
  • acquisition of Bay Dynamics, Inc.
  • various inbound and outbound technology license agreements
• Xilinx, Inc. in its $49 billion acquisition by Advanced Micro Devices, Inc.
• Xperi Corporation in its $3 billion merger of equals with TiVo Corporation and Tessera Technologies, Inc. (now Xperi) in its $850 million acquisition of DTS, Inc.
• Western Digital Corporation in its data storage and solutions joint venture with Unisplendour Corporation Limited to market and sell Western Digital’s datacenter storage systems in China
• Advantest America, Inc. in numerous transactions, including its collaboration with PDF Solutions, Inc.
• Cavium, Inc. in its:
  • $1.4 billion acquisition of QLogic Corp.
  • $6 billion acquisition by Marvell Technology Group Ltd.
• Cadence Design Systems Inc. in its $170 million acquisition of Jasper Design Automation, Inc.

Technology/Internet

• Activision Blizzard Inc. in its $75 billion acquisition by Microsoft Corporation
• Elon Musk in his $44 billion acquisition of Twitter, Inc.
• Trimble Inc. in its: 
  • sale and contribution of its agriculture business to a joint venture with AGCO Corporation, and AGCO’s $2 billion acquisition of an 85% stake in the joint venture
  • sale of its global transportation telematics business units to Platform Science, Inc.
• Embracer Group AB in its acquisitions of Dark Horse Media, LLC and Middle-earth Enterprises, including intellectual property rights to “The Lord of the Rings” and “The Hobbit”
• Dell Technologies Inc. in its:
  • $859 million sale of SecureWorks Corp. to Sophos Ltd.
  • $4 billion sale of Boomi to Francisco Partners and TPG
• Scopely, Inc. in its:
  • $1 billion acquisition of GSN Games, Inc. from Sony Picture Corporation
  • $4.9 billion sale to Savvy Games Group, which is wholly owned by Saudi Arabia’s Public Investment Fund
  • pending $3.5 billion acquisition of Niantic’s games business, which includes Pokémon GO
• Nokia Corporation in multiple transactions, including:
  • the settlement of its global patent litigation with Apple for $2 billion
  • $7.2 billion sale of its devices and services business to Microsoft Corporation
  • $2.3 billion acquisition of Infinera Corporation
• Lenovo Group in its pending acquisition of Infinidat
• Getty Images Holdings, Inc. in its $3.7 billion merger of equals with Shutterstock, Inc.
• Square Enix Holdings Co., Ltd. in the $300 million sale of Crystal Dynamics, Inc., Eidos Interactive Corp. and an IP catalogue to Embracer Group AB
• Sabre Corporation in its sale of the AirCentre suite of flight and crew management software solutions to CAE Inc. for $392.5 million
• Zayo Group Holdings, Inc. in several matters, including its:
  • $14.3 billion acquisition by affiliates of Digital Colony Partners and the EQT Infrastructure IV fund, the largest media and communications leveraged buyout since the 2008 financial crisis
  • sale of zColo, including certain U.S. and European data center assets, to DataBank Holdings, Ltd.
• Netflix, Inc. in its acquisitions of Animal Logic, The Roald Dahl Story Company Limited and Scanline VFX
• Proofpoint in its $12.3 billion sale to Thoma Bravo
• Honeywell in its $1.3 billion acquisition of Sparta Systems from New Mountain Capital
• Airbnb, Inc. in its acquisition of HotelTonight, Inc.
• DoorDash in its $410 million acquisition of Caviar from Square
• Silver Lake Partners in its acquisition of a majority stake in ServiceMax, Inc. from GE Digital LLC
• F5 Networks, Inc. in its $1 billion acquisition of Shape Security, Inc.
• Didi Chuxing (Hangzhou Kuaizhi Technology Co., Ltd.) in a strategic software license agreement, and in its acquisition of UberChina from Uber Technologies Inc. The UberChina transaction was named one of China Business Law Journal’s 2016 Deals of the Year
• Bytedance Ltd. in several matters, including its acquisitions of Musical.ly and Moonton, and private equity financings valued at over $20 billion
• Apex Technology Co., Ltd. in its $4 billion acquisition of Lexmark International Inc.
• Samsung Electronics Co., Ltd. in its acquisition of LoopPay, Inc., a mobile payments company
• XIO Group in its $1.1 billion acquisition of J.D. Power and Associates, Inc. from McGraw Hill Financial, Inc.
• Carbonite in its $1.45 billion sale to OpenText and its $618.5 million acquisition of Webroot
• Permira Funds in several transactions, including:
  • the acquisition and subsequent $1.1 billion sale of its portfolio company Renaissance Learning to Hellman & Friedman
  • its significant investment in Curriculum Associates from Berkshire Partners
• NDS Group Ltd. and its owners, Permira Funds and News Corp., in its $5 billion sale to Cisco Systems, Inc.

Life Sciences

• Livongo Health in its $18.5 billion sale to Teladoc
• Stryker Corp. in its:
  • $3 billion acquisition of Vocera Communications, Inc.
  • $4 billion acquisition of Wright Medical Group
• Alder BioPharmaceuticals Inc. in its sale to Lundbeck for up to $1.95 billion
• Array BioPharma, Inc. in its $11.4 billion sale to Pfizer
• Danaher Corporation in the carve-out of its dental supplies unit into a separate publicly traded company called Envista Holdings Corporation via a $589 million initial public offering of common stock
• Otsuka Pharmaceutical Co., Ltd. in its:
  • $430 million acquisition of Visterra, Inc.
  • $1.1 billion acquisition of Jnana Therapeutics Inc. 
• Ares Life Sciences, a health care-focused private equity fund, in several potential acquisitions
• Protalix BioTherapeutics in the sale of its Gaucher disease treatment Elelyso to Pfizer
• Nitto Denko Corporation in its sale of Aveva Drug Delivery Systems to Apotex

Fintech & Financial Services

• Credit Karma in its $8.1 billion acquisition by Intuit and its $50 million divestiture of its tax business, Credit Karma Tax, to Square, Inc.
• LendingClub Corporation in connection with its acquisition of a national bank and transition to become a bank holding company
• ZhongAn International in its insurtech joint venture with SoftBank Vision Fund
• PayPal Holdings, Inc. in multiple transactions, including its:
  • $4 billion acquisition of Honey Science Corporation
  • $750 million strategic investment in MercadoLibre
  • acquisitions of Jetlore, Inc., Hyperwallet and iZettle
• Visa Inc. in connection with its:
  • $1 billion acquisition of Pismo
  • equity interest in, and contractual relationship with, Prisma Medios de Pago S.A., the leading cards and payments company in Argentina
  • proposed (but terminated) $5.3 billion acquisition of Plaid Inc.
• JPMC in connection with its divestiture of the Quorum blockchain platform to ConsenSys and associated agreements
• JD.com, Inc. in the spin-off of its 68.6% stake in its finance business, JD Finance, and in its Thai e-commerce joint venture with Central Group
• Citibank in the sale of its consumer banking and credit card businesses through international auction processes to: Banco Santander Rio S.A. in Argentina; Itaú Unibanco Holding S.A. in Brazil; Scotiabank in Panama and Costa Rica; Promerica Financial Corporation in Guatemala; Banco Ficohsa in Nicaragua; Terra Group in El Salvador; and Banco Colpatria and Bank of Nova Scotia in Colombia

Strategic Patent Transactions and Counseling

• Nokia Corporation in multiple transactions, including the settlement of its global patent litigation with Apple for $2 billion and the $7.2 billion sale of its devices and services business to Microsoft Corporation
• RPX in multiple transactions, including its:
  • acquisition of patent assets from Rockstar Consortium US LP for $900 million
  • acquisition by HGGC for $555 million
  • negotiations with the Japanese patent fund IP Bridge in a syndicated licensing transaction involving 10 member licensees
• a public semiconductor company in a portfolio-wide cross-license with another public semiconductor company
• an internet of things consumer products company in multiple transactions, including the licensing, acquisition and monetization of patents and technology
• IPXI in connection with certain structuring matters and a ULR patent license exchange offering
• MIPS Technologies, Inc. in the concurrent sale of patents to an entity formed by the defensive patent aggregator Allied Security Trust and its acquisition by Imagination Technologies Group plc for aggregate consideration of $450 million

Data Privacy and Cybersecurity Counseling

• assisting clients across various industries with their California Consumer Privacy Act (CCPA) and Gramm-Leach-Bliley Act (GLBA) compliance programs, including advising on privacy policies and procedures, anonymization and de-identification of personal information, privacy-by-design, security-by-design and other best practices
• drafting, negotiating and advising on data processing, data sharing and data transfer provisions and agreements, including in connection with customer and vendor agreements and in the context of machine learning training data sets
• advising clients in connection with adtech, direct marketing and online behavioral advertising
• assessing and advising on data privacy and cybersecurity issues with respect to complex, cross-border corporate transactions