Mark C. Lehberg

Recent Matters

• Represented a leading medical device company in its global divestiture of a line of business to a newly formed joint venture. Involved in the licensing of intellectual property retained by the company to the joint venture, the licensing back to the company of intellectual property sold to the joint venture, and the master transaction action agreement pursuant to which asset and shares were sold to the joint venture.
  
• Advised a leading medical device manufacturer in connection with an international distribution agreement with multinational medical device reseller/distributor, including distribution in France, Italy, Argentina, and India.
  
• Represented one of the world’s leading gemological companies in a transaction related to the client’s participation on and contribution to a blockchain intended to track diamonds from where they are mined, through manufacturing and retail sales.
  
• Advised one of the world’s leading wireless telecommunications companies in connection with the purchase of technology and intellectual property from a Canadian company. Advised on the automatic optimization of camera configuration settings for image quality and computer vision technology used in advanced drive assistance systems (ADAS), and advised on cross licenses between the buyer and the seller for intellectual property.
  
• Represented a pharma excipients company in connection with an exclusive commercial agreement with the supplier of ingredients from the Quillaja saponaria Molina bark used in the manufacture of vaccines, vaccine systems, and/or pharmaceutical adjuvants and excipients in different delivery forms, including parenteral, oral solid dose, liquids, syrups, topical, inhalant, and bioprocessing markets.
  
• Advised a medical products company in connection with a distribution agreement whereby the company obtained the right to distribute proprietary adhesive patches formulated with turmeric and arnica to reduce soreness, bruising, and swelling after needle procedures.
  
• Advised one of the largest independent pharmacy benefit solution companies in connection with the purchase of the assets of a pharmacy benefits manager (PBM) in an asset purchase transaction.
  
• Represented a connected car company in connection with its divestiture of its Automotive Interior Sensing business, technology, and intellectual property to a global leader in eye tracking and pioneer of attention computing, including in connection with various intellectual property license agreements.
  
• Represented a food manufacturer in connection with a co-manufacturing agreement with a subsidiary of one of the world's leading manufacturers of chocolate, chewing gum, mints, and fruity confections.
  
• Advised one of the largest garment manufacturers in Asia in connection with a joint development agreement and a separate manufacturing and supply agreement with one of the world’s largest consumer goods companies.
  
• Represented one of the world’s leading high-speed internet satellite companies in connection with its purchase of fiber optical modem technology and intellectual property for terrestrial, non-satellite-based applications.
  
• Advised a subsidiary of one of the world’s large auto manufacturers in connection with its purchase of intellectual property and technology directed to self-driving systems in automobiles intended to operate at SAE Level 4 and above, including various license agreements for patents, data, software, and other technology and intellectual property.

Chambers USA

• Band 3, California Technology (2024)
• Band 3, California Technology: Transactions (2021 – 2023)
• Band 3, IT & Outsourcing: Transactions (2014 – 2018) 
• Band 3, IT & Outsourcing: Outsourcing (2015)

• Recommended, Patents: Licensing (2018 – 2022, 2024)
• Recommended, Technology: Transactions (2015, 2021 – 2022, 2024) 
• Recommended, Commercial Deals & Contracts (2018 – 2020) 
• Recommended, Patents: Portfolio Management and Licensing (2016 – 2017)
• Recommended, Patent Licensing & Transactional (2014 – 2015)

Additional Recognitions

• Intellectual Asset Management magazine recognized Mark for his patent licensing practice in its IAM Patent 1000 – The World's Leading Patent Practitioners (2012)

• Co-Author, "Artificial Intelligence Drives New Approach to M&A Due Diligence", Bloomberg Law, November 28, 2023
• Co-author, "Generative AI for Essential Corporate Functions: Use Cases & Legal Considerations," Bloomberg Law, April 27, 2023
• 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

• Panelist, "Understanding Software as a Service (SaaS) 101," webinar, hosted by Knowledge Congress
• Instructor, Licensing Executive Society, Intellectual Asset Management (IAM) Professional Development Series, including IAM 205, "Licensing" and IAM 104, "Living with the Deal"
• Instructor, Licensing Executive Society, Professional Development Series Workshop, "Indemnification: Don't Bet the Company!"
• Instructor, San Diego State University, Intellectual Property seminar for Class on Entrepreneurship
• Association of Corporate Counsel, seminars regarding software licensing, cloud computing, off-shore outsourcing and open source software
• Panelist, Proformative Seminars, seminar dealing with cloud computing and software as a service (SaaS) applications for financial and accounting systems

• Provide advice and counsel to Sky Ranch Christian Camp
  
• Provide advice and counsel to Horizon Christian Fellowship
  
• Instructor, San Diego High School Student Program, "When You Become 18"
  
• Prepared summary of Article 2 of the UCC for California Public Counsel
  
• Volunteer, Interfaith Community Services Legal Clinic
  
• Advise Food Research and Action Center (FRAC) regarding commercial transactions