David A. Wormser

David works with intellectual property-intensive businesses to obtain maximum value for their products, services, technologies and, often, their companies, as well as with the purchasers of high-tech goods and services (and the technology itself) to ensure that they obtain the value for which they are paying.

Active in firm management, he formerly served on the firm’s Executive Committee and as managing partner of the firm’s Washington office.

David routinely helps clients negotiate:

• Licenses of all types and varieties covering patents, copyrights, trademarks, and trade secrets.
• Cloud computing, hosted services, and collocation arrangements.
• Settlement agreements resolving patent, copyright, and trademark litigation.
• Development and joint development arrangements.
• Sponsored research agreements.
• Agreements to purchase or sell high-tech companies or their assets.
• Outsourcing and off-shoring deals.
• Consulting agreements.
• Manufacturing and supply agreements.
• OEM, distribution, reseller, and marketing representative agreements.
• Marketing and merchandizing agreements.
• E-commerce arrangements of all varieties.

David joined the firm after serving as assistant general counsel to the Association of Data Processing Service Organizations (now part of CompTIA).

• Represented a qualified clinical decision support mechanism (qCDSM) in a wide range of commercial transactions, including to license content from provider led entities (PLEs) to sell subscriptions for decision support services to health care providers and payers.
• Counseled a provider of a platform for managing and publishing drug formularies in a wide range of transaction with health insurers, PBMs and other payers, pharmaceutical companies, and technology partners.
• Represented a computer security software company in acquiring businesses offering complementary products; creating a full suite of end user licenses, distribution agreements, and other commercial contracts; negotiating multiple OEM agreements; negotiating online search and advertising agreements; and a wide range of commercial and regulatory matters involving e-commerce, privacy, export control issues.
• Represented a manufacturer of specialized electronic components in the sale of all of its assets to a strategic buyer.
• Represented a manufacturer of specialized telecommunications systems in negotiating a wide range of technology licensing arrangements, drafting customer agreements, and managing its use and distribution of Open Source Software.
• Represented an engineering and construction management company in negotiating rights to cutting edge alternative energy technology.
• Represented an online research company in various licensing arrangements and its creation of a master customer agreement covering its full and diverse product line.
• Advised government contractors in navigating the Rights in Technical Data provisions of the FAR and DFAR and taking full advantage of the rights granted by the Bayh Dole Act.
• Represented an online automotive parts distributor in negotiating distribution arrangements with major parts retailers.
• Counseled a major glass manufacturer in negotiating a long-term agreement with a chemical company to develop jointly new glass coatings.
• Represented a major manufacturer of dictation, transcription, and document workflow systems in negotiations to procure technologies key to the company’s strategic plans, and in negotiating the technology-intensive portions of deals spinning off business no longer compatible with the company’s strategic plans.
• Represented a cable multiple system operator (MSO) in its acquisition of mission-critical back-office equipment and software, network and customer premises equipment and related professional services, and in its procurement of video and Internet content.
• Counseled a wireless technology company in licensing its patent portfolio to major cellular handset and infrastructure equipment manufacturers.
• Advised a consumer products company in its acquisition of an ERP system.