Karen N. Ballack

For client GlobalFoundries, Ballack negotiated the IP and technology aspects of its acquisition of IBM's global commercial semiconductor business. In a reversal of the usual transaction template, IBM will ultimately pay GlobalFoundries, owned by an investment arm of the Abu Dhabi government, an estimated $1.5 billion to take its unprofitable chip manufacturing business off its hands, including some 16,000 patents and patent applications.

"GlobalFoundries wasn't paying in the traditional sense, so it was a different dynamic," Ballack said. "It was a strategic carve-out transaction, removing a significant business from IBM and transferring it to another entity." The intermingling of IP and tech made the negotiations and deal challenging, she said, including because she had to analyze carefully IBM's vast patent licensing program.

Other companies had preexisting licenses, to which some of the patents would be subject and that could cost GlobalFoundries the opportunity to use some patents offensively or defensively in certain litigation. "We had to understand the extent and nature of the encumbrances on the patents and the impact on the valuation of the portfolio," Ballack said.

It was Valentine's Day Friday 2015 and Ballack found herself playing anti-Cupid, rounding up a five-lawyer IP team to ask them to cancel all personal plans because a mega-deal was brewing and there would be round-the-clock action through the holiday weekend. At that point, she said, she didn't know who the client or target was, only that speed was essential. It turned out that Facebook Inc. had retained Weil specifically to advise it on its $16 billion acquisition of WhatsApp. Ballack scuttled a flight to Southern California with her husband to watch their 12-year-old son play water polo. Everyone got to work. The deal was to sign in five days.

"How could we conduct IP and technology due diligence in so small a window of time?" Ballack wondered. To clear that aspect, she and her team huddled with the client to focus on the business objectives of the acquisition and prioritize which angles to scrutinize. "Then we put sufficient protective measures in the deal documents in case anything else came up later," she said. "We did go home to sleep when we could. I remember sleeping on my couch and setting the alarm for every 45 minutes to check my email. Insane but exhilarating."

By Wednesday it was over. "A monumental team effort by Weil and Facebook," Ballack summed up. "And there were no shattered romances as a result of the emergency."

- John Roemer