Victoria Lee
PartnerCo-Chair, Technology and Life Sciences Licensing and Commercial Transactions
Co-Managing Partner, Northern California
Managing Partner, Silicon Valley office
Vicky Lee has been practicing in DLA Piper's Technology and Sourcing group for more than 25 years. She focuses on representation of emerging growth and public companies in complex technology and commercial transactions in the technology sector, as well as a variety of other industry sectors.
Vicky has extensive experience in developing strategies for clients to protect, license and exploit their intellectual property assets. Her practice includes structuring, drafting and negotiating complex commercial and intellectual property agreements, such as:
- License agreements for patents, software, copyrights, trademarks and trade secrets
- Agreements for product distribution, including OEM, distribution, sales representative and reseller agreements
- Manufacturing and purchase and supply agreements
A significant component of Vicky's practice includes advising clients on open source business models and compliance issues, and she has substantial experience in representing both customers and service providers in cloud computing and software as a service transactions. She has extensive experience advising clients in developing strategies to incorporate and leverage AI in their product development and business models, as well as mitigating risks and navigating governance issues to ensure the responsible use of AI.
Vicky also has significant experience assisting clients in the intellectual property aspects of buy-side and sell-side M&A transactions, spin-ins and spin-outs and carve-outs.
In 2017, the Silicon Valley Business Journal named Vicky to its list of Women of Influence. Also in 2017, the respected research publisher Chambers & Partners recognized her in Chambers USA: America's Leading Lawyers for Business. The Recorder listed her as one of the 50 Women Leaders in Tech Law for 2013/2014.
Vicky is a member of the firm's Executive Committee.
EXPERIENCE
- Represented HPE in various negotiations and executions of intellectual property matter agreements, including in connection with HPE’s divestiture of its software business unit to Micro Focus, Inc.
- Represented a 3D facial animation and virtual try-on company in a cross-border commercial agreement with a leading Chinese-language Internet search engine company, involving the license of patents and other intellectual property related to Image Metrics’ 3D video and still frame facial recognition technology
- Represented a multinational software and information technology business in a variety of commercial matters, including the development of a number of template agreements such as end user click-through agreement, master customer license agreement, support services agreements, professional services agreements and service level agreements
- Served as primary outside counsel in commercial transactions for Velti plc (VELTI), a leading global provider of mobile advertising and marketing solutions; also represented Velti in intellectual property matters related to Velti's acquisition of Mobclix, a privately held mobile and exchange network, and Air2web, Inc. privately held mobile messaging provider
- Represented SurveyMonkey in its commercial transactions, strategic transactions, domestic and international privacy, security and other regulatory and compliance matters; also represented SurveyMonkey in intellectual property matters related to SurveyMonkey's acquisition of MarketTools, Inc. and Wufoo
- Advised JDS Uniphase (JDSU) in its purchase of the network solutions test business from Agilent Technologies, Inc. in over 25 countries
- Represented JDA Software Group, Inc. in intellectual property matters related to its acquisition of i2 Technologies, Inc.
- Represented NewNet Communication Technologies LLC in intellectual property matters related to its acquisition of certain WiMAX technology and assets from Nokia Siemens Networks B.V.
- Advised a leading social network in Asia in its sale to an online payments solution provider
- Represented a leading virtual goods sales and distribution company in its commercial licensing transactions
- Advised online gaming, MMOG and virtual world companies in their commercial transactions
- Assisted Sun Microsystems, Inc. in open sourcing the Solaris operating system
- Represented a multinational, publicly held semiconductor company in the negotiation of a long-term patent and trademark license as part of a settlement of a patent infringement suit
- Represented corporate venture clients in their investments and ongoing legal advice with respect to corporate venture portfolio companies
- Represented a publicly traded mobile device company in numerous purchase, manufacturing, licensing and service agreements with respect to software licenses, hardware procurement, semiconductor purchases and support services
- Advised a multinational global logistics, transportation and supply chain management company in software and hardware systems acquisition and software development agreements and the implementation of a global document retention policy and global privacy policy
- Company counsel for various high technology and multimedia startup companies, representing them in general corporate matters, venture capital financing and general intellectual property matters, including the development of format distribution and sale agreements
- Participated in negotiations and documentation of the strategic joint development agreement for a publicly held global positioning satellite technology company
- Assisted in drafting strategic development and license agreements between a multibillion-dollar publicly held software company and a telecommunications company
- Served as outside general counsel to privately held networking companies and assisted each of them in their acquisitions by different publicly held companies in multimillion-dollar mergers
- Rendered advice in connection with the initial public offerings of various application software companies
- Negotiated and drafted sophisticated asset transfer and license agreements for liquid crystal light valve technology in the restructuring of a multimillion-dollar joint venture between a multinational foreign corporation and a publicly held US company
- Represented a developer of photoscanning software in the acquisition of a foreign photoscanning hardware manufacturer, involving the negotiation and drafting of complex distribution, asset transfer, manufacturing and sales representative agreements
- Represented a Global Fortune 50 company in negotiating and documenting a complex strategic relationship with a privately held US company for next-generation emission displays, which included the establishment of a bankruptcy remote entity to facilitate the granting of multiple intellectual property licenses
- Represented both acquirers and targets and purchasers and sellers in numerous mergers, acquisitions, and technology asset sales and purchases
Representative Clients
- Honeywell
- Tech Mahindra
- Avanade
- Cambium Networks
- Hewlett Packard Enterprise Company
- Oracle Corporation
- Planet Labs
- On24
- PinDrop
- Rebuilding Together Peninsula
- NetApp
- Deere & Company
- UpHealth
- Ghost Robotics
- GigCapital5 / QT Imaging
- TA Associates
- Chinese (Cantonese)
- J.D., University of California at Davis 1993
- B.A., History and Economics, University of California at Davis 1990
Awards
The Legal 500 United States
- Leading Lawyer, Technology: Transactions (2023-2024)
- Recommended, Patents: Licensing (2023-2024)
Chambers USA
- Band 3, California Outsourcing (2024)
- Band 3, California Technology (2024)
- Band 3, California Technology: Outsourcing (2023)
- Band 3, California Technology: Transactions (2023)
Other recognitions
- Named a BTI Client Service All-Star (2019-2020)
The respected research publisher Chambers and Partners has recognized Vicky in Chambers USA and calls her a "leading open source lawyer." Sources praised her "'personable, conscientious and knowledgeable' manner of delivering expert advice." The directory has also stated that "market commentators are quick to utilize her skills 'when we need firepower on the technology side.' She is also singled out for the depth of experience that ensures rapid responses to complex issues."
The Legal 500 United States, another well-regarded legal directory, has recommended Vicky for patent licensing and transactional work. In describing DLA Piper's practice, the directory stated that "[t]he 'responsive and creative' team is praised for its 'stellar service and cutting-edge knowledge.'"
M&A Advisor honored DLA Piper with the 2012 M&A Deal of the Year award for our representation of SurveyMonkey in its acquisition of MarketTools. The Recorder lists her as one of the 50 Women Leaders in Tech Law (2013-2014).
Bylines
- "Generative AI for Essential Corporate Functions: Use Cases & Legal Considerations," Bloomberg Law, April 27, 2023
- "How Covid-19 Reshaped Both Our Lives and Tech Legal Trends," Bloomberg Law, April 23, 2021
- "Task Force on Artificial Intelligence hearing: Equitable Algorithms: Examining Ways to Reduce AI Bias in Financial Services – key testimony on challenges and opportunities," Technology's Legal Edge, February 28, 2020
- "Companies must reassess IP risks in Covid-19 era," Calcalist Tech, August 11, 2020
- "Task Force on Artificial Intelligence – hearing to discuss use of AI in contact tracing," Technology's Legal Edge, July 29, 2020
- "Guest Blog: Intellectual property rights are a renewed focus as the world looks beyond a global viral outbreak," Israel Global Gateway, July 23, 2020
- "Intellectual property rights are a renewed focus as the world looks beyond a global viral outbreak," DLA Piper, June 30, 2020
- "Tech Sector COVID-19 Insights," Technology's Legal Edge, April 30, 2020
- "Legal Issues the Tech Sector Shouldn't Forget During a Global Viral Outbreak," Law.com, April 9, 2020
- "Key legal issues that bear remembering during a pandemic," Technology's Legal Edge, April 9, 2020
- "COVID-19 contract issues reach beyond force majeure," Technology's Legal Edge, March 19, 2020
- Co-author, "COVID-19 Contract Issues Reach Beyond Force Majeure," Law 360, March 13, 2020
- Co-author "INSIGHT: Coronavirus Contract Considerations Beyond 'Act of God' Issues," Bloomberg Law, March 13, 2020
- Co-author, "The big legal issue Blockchain developers rarely discuss," CoinDesk, September 8, 2018
- "Reminder to service providers: re-register your DMCA agent designation by 12/31/17," October 26, 2017
- "Upcoming changes in requirements for service providers to benefit from DMCA safe harbor: consider these key steps," November 10, 2016
- Co-author, "Obama signs federal trade secret bill into law: key points for IP," Intellectual Property and Technology Alert, May 11, 2016
- Co-author, "Dealing with potential bankruptcy of a licensor; A bankruptcy remote entity may be one way to avoid risks for licensees," The National Law Journal, 4 Dec 2004
Seminars
- "California Employment Law Briefing," January 15, 2019 (San Francisco) and January 17, 2019 (Silicon Valley)
Media Mentions
- "Artificial Intelligence Drives New Approach to M&A Due Diligence", Bloomberg Law, November 28, 2023
- "When Using AI May Not Be So Smart," San Francisco Business Times, May 19, 2020
- "Why Litigation Fears Mean Firms' Phones Are Still Ringing," Law360, April 16, 2020
