Gilbert J. Villaflor
Gilbert J. Villaflor
is a counsel in O'Melveny's Newport Beach office and a member of the Mergers & Acquisitions Practice. His practice focuses on technology transactions and he regularly advises clients on the acquisition, sale, development, and licensing of technology and intellectual property in a broad range of industries, which include biotechnology, pharmaceutical, software, medical devices, gaming, multi media and wireless technology. He is involved in the structuring and negotiation of technology-related agreements with the goal of protecting valuable patent, copyright, trademark, trade secret and software assets. Gilbert is a registered patent attorney with prior patent litigation experience, which includes the successful representation of clients in both the assertion and defense of patent infringement claims. Mergers & Acquisitions.
As a member of the M&A Practice, Gilbert counsels clients on intellectual property issues that arise in mergers and acquisitions, asset sales, private equity investments and venture financings. His expertise covers providing IP support and conducting complicated due diligence for M&A, financing and restructuring transactions, including identifying open source software issues, providing risk allocation assessment and evaluating intellectual property portfolios. His illustrative mergers & acquisitions-related experience includes:
Licensing and IP Development.
- Representing a leading digital media storage manufacturer in its US$1 billion acquisition.
- Representing a California-based pharmaceutical company in a US$115 million acquisition by a Swiss pharmaceutical company.
- Representing a leading provider of online fraud prevention solutions through software and cloud services in its US$200 million acquisition.
- Representing a client in a series of transactions involving the acquisition of a casino resort.
- Representing a leading digital media storage manufacturer in its acquisition of the magnetic media sputtering operations of major corporation.
- Representing a leader in business-critical security applications and services in its acquisition by a technology company.
- Representing a leading provider of high-level synthesis for FPGAs and ASICS in an acquisition.
- Representing the largest single-profession pension fund in Canada in its strategic investment in a privately held company regarded as the leading provider of LPDs for large format display applications.
- Representing the world’s leading e-commerce company for small business in its acquisition of a rapidly expanding channel e-commerce company.
- Advising a number of private equity firms in their acquisition of various portfolio companies and venture financings.
Gilbert has drafted and negotiated a number of software, patent, technology and content license agreements. Recently, he has negotiated on behalf of client, an industry leader in providing advanced digital signage software solutions, an OEM license agreement with a worldwide leader in networking; negotiated a technology license and development agreement on behalf of a client developing electrochemical flow battery energy storage solutions; and drafted and negotiated a technology license agreement for a start-up client seeking to develop a robotic system for surgical application in the field of ophthalmology. He regularly provides counsel on various commercial agreements for a company that is quickly becoming the world leader in mobile device security. Gilbert’s experience also includes the drafting and negotiation of OEM, supply, manufacturing, distribution and service agreements.
Registered to Practice,
U.S. Patent & Trademark Office Co-Author,
"Struggle for Ownership," The Recorder
(April 11, 2007) (discussing KSR International Co. v. Teleflex, Inc.
former Board of Governors, Philippine American Bar Association (PABA)