Matthew D. Berger

Partner

Palo Alto
Willkie Farr & Gallagher LLP
1801 Page Mill Road
Palo Alto, CA 94304
T 650 887 9388
F 650 887 9499
mbergerwillkie.com

Matthew D. Berger is a partner in the Corporate & Financial Services Department, focusing on complex technology transactions and intellectual property counseling and advice. He advises clients generally in high technology industries such as the semiconductor, life sciences, and alternative energy industries.

Matthew has extensive experience in negotiating and drafting agreements for the development, licensing, production, supply, and support of semiconductors and other hardware; software and data; pharmaceutical, biotechnology, and medical devices and systems; and multimedia and entertainment products and content. He has negotiated agreements for the protection and transfer of copyrights, trademarks, patents, trade secrets, and other intellectual property, and has litigated copyright, trademark, patent, trade secret, royalty, and domain name claims and disputes.

In addition, Matthew represents technology, life sciences, and media and entertainment companies in financings, mergers and acquisitions, strategic alliances, and joint ventures, and other corporate structuring matters. He also represents emerging technology companies and ventures in entity formation, and is experienced in structuring and negotiating angel and venture financing.

Matthew has particular experience in the semiconductor and computer hardware area. He has advised clients with regard to, and has negotiated and drafted agreements for, the development and licensing of semiconductor process technology and cores, SIP, and other semiconductor designs; the purchase and sale of semiconductor tooling and equipment; the manufacturing, packaging and testing, distribution, sale, and other commercialization of semiconductor products; and the manufacturing, assembly, testing, distribution, sale, and other commercialization of servers, personal computers, handheld devices, and other hardware. Matthew has also advised clients with regard to, and has negotiated and drafted agreements for, mergers and acquisitions of semiconductor and other hardware companies and joint ventures for the development of semiconductor process technology and designs, the construction of fabs, the manufacturing of semiconductor products, the design, development, manufacturing and assembly, distribution, and sale of servers and other types of computers, and the design, development, manufacturing, distribution, and sale of high-end switches and routers.

Matthew is recognized as a recommended licensing expert in Intellectual Asset Management’s inaugural edition of the IAM Patent 1000, and has been recognized for excellence in the area of life sciences by Intellectual Asset Management’s IAM Licensing 250 rankings.

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Matthew D. Berger is a partner in the Corporate & Financial Services Department, focusing on complex technology transactions and intellectual property counseling and advice. He advises clients generally in high technology industries such as the semiconductor, life sciences, and alternative energy industries.

Selected Significant Matters

  • Facebook in its technology acquisition and infrastructure deals for Facebook’s data centers since 2010, including:
    • structuring, negotiating, and drafting agreements for the development, manufacturing, and supply of customized servers, server components, and other technology for Facebook’s data centers around the world;
    • its collaboration with a leading public American multinational semiconductor company to develop and manufacture certain semiconductor products and the purchase and supply of the same;
    • its investment in and collaboration with a semiconductor company for the development and licensing of high-end semiconductor products; and
    • a multijurisdictional survey of laws and regulations concerning the establishment and operation of its global data centers, including by providing advice with respect to the import/export of hardware and software, cross-border content and data transfers, and multijurisdictional content and data caching on Facebook’s servers and data privacy.
  • Salesforce in numerous technology and commercial deals, including:
    • structuring, negotiating, and drafting its technology acquisition and infrastructure deals for its data centers and enterprise, including agreements for the development, manufacturing, supply, and maintenance of both OEM and customized high-end servers, server components, and other technology for Salesforce’s data centers;
    • structuring, negotiating, and drafting its strategic agreement with Dell and EMC for the purchase, supply, and maintenance of high-end servers, storage, and other data center hardware and software technology as well as enterprise IT hardware and software;
    • structuring, negotiating, and drafting its strategic agreement with a leading public American multinational networking products and services company for the purchase, supply, and maintenance of high-end switches and routers and other networking technology for its data centers and enterprise; and
    • its licensing of a global network security solution for use in monitoring entry-points and end-points around the world.
  • Samsung Electronics in numerous strategic M&A transactions, including:
    • its US$8 billion acquisition of Harman International Industries, Inc., the market leader in connected car solutions, which was Samsung’s largest-ever acquisition and the largest Korean outbound M&A transaction on record;
    • its US$310 million acquisition of UK-listed CSR Plc’s mobile connectivity and location technology and IP including Bluetooth, Wi-Fi and GPS and the strategic acquisition of a 4.9% equity stake in CSR Plc;
    • its US$110 million investment for a 3% equity interest in Sharp Corporation, one of the leading electronics goods and component manufacturers based in Japan;
    • its acquisition of Nanoradio AB, a developer of ultra-low power wireless LAN chipsets for high-speed wireless access in mobile phones based in Sweden;
    • the US$1.4 billion sale of its hard disk drive (HDD) business to Seagate Technology, a NASDAQ-listed manufacturer of HDD and storage solutions, and extending and enhancing the existing patent cross-license agreement between the companies. This transaction was commended as one of the “Most Innovative Corporate Deals 2012” in Financial Times US Innovative Lawyers Report 2012 and was awarded “M&A Deal of the Year 2011” by ASIAN-MENA COUNSEL and “Matter of the Year 2011” by Global Competition Review; and
    • its US$1.5 billion private share redemption transaction with Seagate Technology, a NASDAQ-listed manufacturer of hard disk drive and storage solutions.
  • Samsung Telecommunications America in drafting and negotiating various IT consulting agreements, including for the provision of certain consulting and other services from a technology and market research company and for the development of certain software using open source software.
  • China Media Capital in connection with its US$350 million joint venture with DreamWorks Animation, a leading U.S. animation company, to create Oriental DreamWorks, a new animation company, focusing primarily on creating original film and television animation content for China and the rest of the world. The joint venture is positioned to be the leading China-focused family entertainment company and is one of the largest international investment projects in China.
  • Softbank in the development and implementation of its over-the-Internet TV network, including securing content rights for the Japanese market, and in its joint venture with Broadcast.com in Japan.
  • Seiko Epson in its US$1 billion licensing, joint development, manufacturing, and joint commercialization deal with Infineon for a new generation "system on a chip" for mobile phones. The chip integrated four bands of cellular RF, WiFi, Bluetooth, and GPS into a single die.
  • A major memory company in the acquisition of another major memory company, including the re-negotiation of patent cross-licenses and negotiation of licensing, joint development, and foundry manufacturing agreements.
  • Toshiba in its strategic foundry agreement with Xilinx, under which Toshiba manufactures FPGA semiconductor products for Xilinx.
  • Fujitsu in its strategic alliance with Cisco for the design, development, supply, distribution, and sale of high-end switches and routers.
  • Fujitsu in its strategic alliance agreement and related agreements with Sun Microsystems, covering the joint development and subsequent purchase, sale, and worldwide distribution of servers and server products; Fujitsu’s manufacture and sale to Sun of CPUs, ASICs and other semiconductor products; and the re-negotiation of Solaris licenses.
  • One of the leading ATE systems vendors in the development and front- and back-end manufacturing of a custom ASIC chip.
  • A major fabless semiconductor company in outsourcing its front-end manufacturing, and in re-negotiating its back-end manufacturing services agreements with all of its back-end vendors.
  • NEC Electronics in entering into IBM’s consortium for the licensing and development of advanced semiconductor manufacturing process technology.
  • Sony in its multi-billion dollar joint venture with IBM for the development of the "Cell" semiconductor chip and the development of a next generation process technology to manufacture the Cell Chip, including the US$365 million investment by Sony into IBM’s Fishkill fab.
  • Hitachi in its US$2 billion acquisition of IBM's hard disk drive business, including a major semiconductor development and manufacturing agreement and a hard drive requirements supply agreement with IBM.
  • Chartered Semiconductor in its joint venture with IBM for the development of a next generation process technology and sharing of semiconductor manufacturing capacity.
  • A prominent semiconductor design and manufacturing company in the licensing, joint development, and front- and back-end manufacturing of a semiconductor product for space and military applications.
  • Toshiba in the licensing of its patent portfolio and other technology, the negotiation of a joint research and collaboration agreement, and other aspects of its strategic partnership with Antara Biosciences for the development and commercialization of Toshiba’s DNA chip business in the U.S.
  • Dong-A Pharmaceutical, a leading Korean pharmaceutical company, in its strategic alliance with Meiji Seika Pharma, a Japanese pharmaceutical company, to develop, manufacture, market, and sell biosimilar pharmaceutical products, including through the construction of a manufacturing facility in Songdo, Korea.
  • Dong-A Pharmaceutical in its US$125 million equity investment in and the structuring and organization of its strategic alliance with GlaxoSmithKline. This transaction is one of the largest and most comprehensive collaborations in the history of the Korean pharmaceutical industry and was commended as one of the “Most Innovative M&A Deals 2010” by Financial Times US Innovative Lawyers Report 2010.


* Matthew advised on these matters prior to joining Willkie.

Prior Experience

Prior to joining Willkie in 2018, Matthew was a partner of Paul Hastings LLP in Palo Alto and Tokyo.