Eugene Chang is a partner in the Intellectual Property Department who practices on the cutting edge of intellectual property, antitrust and bankruptcy law. He leads the transactional practice within the IP department, and counsels clients on licensing, outsourcing, and on intellectual property issues arising in complex transactions, like private equity, mergers and acquisitions, public and private offerings, bankruptcy-related acquisitions and standards-related licensing programs. He also litigates intellectual property issues in the United States and internationally across a wide range of technology areas, including software, pharmaceuticals and medical devices. He also counsels client on global trademark strategy, including prosecution, enforcement and licensing.
Chambers USA (2022) recognizes Mr. Chang as a leading Technology practitioner in New York. He has been recognized as a NY Super Lawyer (2013-2022), and was named to the 2012 BTI Client Service All-Star Team, an elite group of attorneys recognized by leading corporate counsel for delivering superior client service.
Selected Significant Transactional Matters
- Represented ForgeLight LLC, an operating and investment company focused on the media and consumer technology sectors, in its acquisition with Searchlight Capital Partners of a majority interest in Univision, a leading Spanish language media company in the United States.
- Represented Choice Hotels International in its approximately $675 million acquisition of Radisson Hotel Group Americas.
- Represented Canadian retailer Hudson’s Bay in its $2.9 billion cross-border acquisition of iconic U.S. luxury retailer Saks Incorporated.
- Represented TriTech Software, a leading public safety software developer, in its recapitalization by Bain Capital Private Equity.
- Represented Insight Partners in its partnership with HBC to launch Saks as a standalone ecommerce business, and its $500 million minority equity investment in Saks.
- Represented FIS, a global leader in financial services technology, in its $42 billion agreement to merge with Worldpay, Inc., a global leader in eCommerce and payments.
- Represented oil and gas data intelligence provider Drillinginfo, a portfolio company of Insight Venture Partners, in its sale to Genstar Capital.
- Represented Insight Venture Partners and Veeam Software in a $500 million investment by Insight in Veeam.
- Represented Insight Venture Partners in the acquisition of Virgin Pulse, including negotiation of trademark licensing rights to Virgin brand.
- Represented Warburg Pincus in its sale of online deal site Slickdeals to Goldman Sachs Merchant Banking Division and Hearst.
- Represented OSG Billing Services, a portfolio company of Aquiline Capital Partners, in the take-private acquisition of Communisis PLC, a communications and marketing outsourcing company listed on the London Stock Exchange.
- Advised clients on trademark acquisition and branding strategies, and implemented strategies in North America and globally.
- Represented Valtech Cardio in its acquisition by Edwards Lifesciences Corporation for up to $690 million.
- Representing Apollo Management Holdings in complex licensing and services transactions concerning software and technical services.
- Representing Marsh & McLennan in complex licensing and services transactions relating to new technology initiatives.
- Representing Allstate in complex licensing transactions concerning software and technical services.
- Represented Aetna in $1.45 billion sale of U.S. group life and disability business to The Hartford.
- Represented sale of eVestment to Nasdaq for $705 million.
- Representing The Options Clearing Corporation in negotiating a software development agreement for its core options clearing platform.
- Represented AssetMark, Inc. in $780 million acquisition by China-based Huatai Securities from Aquiline Capital Partners and Genstar Capital.
- Represented Protective Life in $1.06 billion acquisition of MONY Life Insurance Company and certain other assets from AXA, including negotiating appropriate transition services.
- Represented Aegon's Transamerica life subsidiaries in divestment in which Transamerica will reinsure $14 billion of liabilities to affiliates of Wilton Re US Holding Inc.
- Represented Thales Group in acquisition of LiveTV from JetBlue for $400 million.
- Represented Aviva plc in its $1.8 billion sale of Aviva USA Corporation to Athene Holding Ltd, including negotiating appropriate transition. services arrangements.
- Represented Kinnser Software in acquisition by Mediware Information Systems.
- Represented Valtech Cardio in acquisition by Edwards Lifesciences.
- Represented Allstate in acquisition of SquareTrade for $1.43 billion.
- Represented Battelle Memorial on IP and software issues in the acquisition of Seebyte Corp.
- Represented Fidelity National Information Services in sale of SunGard Public Sector and Education Businesses to Vista Equity Partners for $850 million.
- Represented The Mens Wearhouse in acquisition of Joseph Abboud and various other transactions, and in litigation concerning trademark licenses.
- Represented Morgan Stanley as lender in restructurings of Colt Defense, LLC and of Global Geophysical Services (GGS).
- Represented Assurant in sale of employee benefits business to Sun Life for $940 million.
- Represented Fidelity National Information Services in acquisition of SunGard for $9.1 billion.
- Represented dormakaba in acquisition of mechanical security businesses from Stanley Black & Decker for $725 million.
- Represented Wallapop in merger with Letgo.
- Represented Insight Venture Partners in acquisition of controlling interest in Virgin Pulse.
- Represented Turner Broadcasting in acquisition of iStreamPlanet.
- Represented GFI Software in sale of TeamViewer to Permira.
Represented Syncsort Inc. on software IP issues in various acquisitions.
- Represented Telcordia Technologies, Inc., Providence Equity Partners and Warburg Pincus in the sale of Telcordia to Ericsson.
- Represented Aquiline Capital in technology investments and acquisitions, including Clear2Pay.
- Represented Insight Venture Partners in multiple transactions, including investment in Drilling Info Inc., the leveraged recapitalization of a German software company, and the sale of Hitwise Inc. to Experian.
- Represented Spheris, Inc. in Chapter 11 restructuring proceedings.
Selected Significant Litigation Matters
- Represented GFI Software as lead counsel against four different patent assertion entities in separate patent infringement actions in the Eastern District of Texas; successfully resolved all four actions on favorable terms.
- Lead attorney on IP allocation and valuation issues representing the UK Pension Fund of Nortel Networks at trial in the Nortel bankruptcy proceedings pending in the US and Canada concerning allocation of $7.5 billion in assets.
- Lead attorney in trademark opposition proceedings before the USPTO defending a financial services client’s mark, settled favorably after conclusion of discovery, before trial.
- Represented clients across many industries in policing and enforcing trademarks, including coordinating multijurisdictional trademark enforcement programs.
- Represented Actavis against UCB, Inc. in patent infringement action in Eastern District of Texas concerning medical packaging for transdermal patches.
- Represented Actavis in ANDA patent litigations concerning a pharmaceutical weight loss treatment (Qsymia) and drug for treating multiple sclerosis (Gilenya).
- Trial counsel representing Hospira Inc. and Orion Corp. in protecting the validity and enforceability of a patent for the active ingredient in the sedative Precedex.
- Lead counsel for Forethought against three different patent assertion entities in the Eastern District of Texas; successfully resolved all three actions on favorable terms.
- Represented Actavis against Galderma Laboratories in an ANDA patent litigation concerning a topical acne treatment.
- Represented client in acquisition of Microporous from Polypore in FTC divestiture and representing Microporous in related patent litigation.
- Represented Arkema against Honeywell in patent litigation concerning fluorochemical refrigerants.
- Represented Neos Therapeutics against Shire in an ANDA patent litigation concerning an amphetamine product.
- Represented Nautilus Neurosciences against Sandoz in ANDA patent litigation concerning a migraine pharmaceutical treatment.
- Represented Hilite in patent litigation concerning automotive engine technology.
- Represented Philips Medical Systems in enforcing and defending against 21 patents relating to several different facets of automatic external defibrillator (AED) technology.
- Represented Philips Semiconductors in enforcing patents forming the basis for a successful licensing program covering an industry standard for communication between integrated circuit chips.
- Represented Johnson & Johnson in enforcing pioneering patents relating to coronary stent technology.
Mr. Chang has vast experience in addressing intellectual property issues and technology services arrangements in mergers and acquisitions, including in insurance-related transactions. In particular, he has represented both buyers and sellers in managing complex transition services arrangements related to the transfer or acquisition of insurance assets and securities, including for Aviva plc, Allstate, and Protective Life. Mr. Chang has also advised clients on acquisition and sale of global trademark portfolios, including in connection with bankruptcy and reorganization, and regularly advises on global branding strategies.
Mr. Chang is a past Vice Chair of the Asian Practice Committee of the Intellectual Property Owners Association (IPO), and has participated in IPO delegations meeting with judges, officials of various patent offices, and intellectual property organizations in China, Japan and Korea. Mr. Chang has given presentations on Patent Law and Antitrust Law to organizations around the world, and has lectured on U.S. Patent and Antitrust Law at Franklin Pierce Law School in the United States and Fudan University School of Law in China.
Mr. Chang also has strong experience addressing intellectual property issues in renewable energy. He has given presentations on intellectual property topics at renewable energy conferences, and litigated and counseled clients in environmentally friendly technologies such as light emitting diodes (LEDs), anaerobic digestion technology, compact fluorescent lighting and automotive refrigerants with low global warming potential.
Mr. Chang is also active in pro bono activities and has been honored by the Legal Aid Society of New York with an award for Outstanding Pro Bono Service.