Software

Wyatt’s Software team understands the unique challenges of developing and purchasing software. They provide comprehensive guidance in a wide range of areas, including licensing, intellectual property protection, data privacy and security compliance, service agreements and regulatory matters.

Representative Matters

Wyatt team members have represented clients in a wide variety of projects and areas, including the following:

Corporate & Securities

• Represented a cloud-based inventory and warehouse management system company in a merger transaction with another inventory management software company.
• Represented a designer in connection with its acquisition of certain assets of a custom clothing software, which included negotiation of a commercial license agreement.
• Represented a CRM software company in connection with a number of matters, including negotiating master service agreements, source code escrow agreements, and preparing a new form master service agreement.
• Represented numerous financial sponsors in debt and equity investments in software companies.
• Represented Software as a Service (SaaS) company from formation to eventual sale to a public company.
• Represented a quick service restaurant software company in a sale transaction to a private-equity-backed buyer.
• Drafted a wide array of software agreements, including master software agreements covering multiple products of vendor, software license and subscription agreements, software service level agreements (SLAs), custom software development (a/k/a time and materials) services agreements, marketing and referral agreements, healthcare related software agreements (e.g., electronic health records (EHR), electronic medical administration records (eMar), telehealth), credit and debit card payment services agreements, source code escrow agreements, and software data exchange (VPN tunnel) agreements, third-party software integration agreements.
• Performed due diligence in mergers and acquisitions for data privacy and cybersecurity of acquisition target’s IT including software products and technologies.

Data Privacy and Cybersecurity

• Review and advise on privacy, cybersecurity, and regulatory compliance requirements and implications of contracts and applications related to EHRs, eMARs, telehealth, medical device software, and other healthcare cloud computing items and services (e.g., HIPAA, federal government certification and interoperability requirements).
• Review and advise on software contracts for automotive suppliers, non-profit organizations, colleges and universities, banks, company HR departments and group health plans, and software vendors, among others, where the contract implicates the privacy and cybersecurity of personal information and/or business operations. These standards include GDPR, HIPAA, FERPA, GLBA, SOC 2, PCI DSS, NIST Cybersecurity Framework,  ISO/IEC 27000 Series.
• Draft agreements that implicate state and federal data privacy laws including  business associate agreements, data processing agreements, confidentiality and non-disclosure agreements, health information exchange agreements, and other data exchange/access/sharing agreements.
• Draft and/or advise on data privacy and cybersecurity policies and procedures for compliance with laws and standards applicable to the client’s business sector.
• Draft website privacy statements and policies for compliance with applicable state and federal privacy laws.

Intellectual Property

• Represent software providers and customer licensees, in post-procurement disputes over matters such as proper software functioning, support service quality, jeopardy to confidential information, and peril from third-party intellectual property infringement accusations.
• Draft commercial agreements including Software as a Service (SaaS), Subscription and Services Agreements, and End User License Agreements (EULAs).
• Draft website and mobile app terms of use and data processing and privacy policies for a variety of applications including but not limited to veterinarian pet care apps, medical records, medical devices, medical research, video games, and virtual reality training application.
• Draft Publisher License Agreements for the development of video games.
• Provide advice on open-source software and licenses.
• Obtained a number of software patents.
• Advise clients on protecting their software code including applying and registering for copyright protection and/or utilizing trade secret protection.
• Represent software companies in evaluating potential trade and service marks, prosecuting federal applications for trade and service marks, and enforcing trademark rights against others.
• Physical science and information processing – obtaining dozens of patents that use video recordings of light reflected from moving machine parts to troubleshoot problems before they become serious, using software operating to provide enhanced visualization of motion, modal analysis, motion amplification, frequency filtering, and movement phase normalization.

Litigation

• Represented a patent owner in a patent infringement lawsuit against one of its competitors in the U.S. District Court for the Central District of California.  The patent involved features of certain electronic “smart” safe products used in the retail industry for cash control and facilitating armored car pickup.  Wyatt helped our client obtain an agreed-upon settlement to resolve the case.
• Represented a client sued for patent infringement in the U.S. District Court for the Eastern District of Texas.  The patent owner alleged our client was infringing certain patents related to video surveillance security systems and effective storage and retrieval of information.  Wyatt helped our client obtain an agreed-upon settlement to resolve this case.