Karen N. Ballack

Ballack has been working in technology and intellectual property law since 1989. She has been a partner in the Silicon Valley office of Weil, Gotshal & Manges LLP since 1999. Ballack's experience includes a wide variety of industries within intellectual property law, including software, internet, hardware, semiconductors, life science, and medical devices.

"Whereas some law firms I know compartmentalize the industry areas in which their tech and IP transactional attorneys work... that is not the case at Weil." Ballack said in a phone interview. "All of the partners and associates and counsels in our tech and IP transactions groups are expected to work with clients across industries."

Ballack's work falls into transactional areas. She works to structure strategic alliances and corporate partnering transactions, assist with the acquisition of intellectual property and help foster agreements between companies regarding intellectual property.

One large transaction she oversaw on the IP side was the sale of computer chip manufacturer Maxim Integrated to their former rival company, Analog Devices. The combined enterprise was valued at $68 billion. In handling IP matters in M&A transactions, Ballack said, "The buyer is going to be focused on making sure that the target company it is acquiring actually owns the intellectual property that it claims to own, and also making sure the acquisition does not trigger anything that adversely impacts the target company's intellectual property portfolio, for example, some sort of right of a third party to the target company's - in this case, Maxim's - intellectual property."

She also oversaw a settlement of the patent litigation between Guardant Health, Inc., an oncology company focused on cancer-related blood tests and Foundation Medicine, Inc., a subsidiary of Roche. She helped reach a settlement where Foundation Medicine would pay Guardant Health $25 million and future royalties for the remaining term of Guardant Health's licensed digital sequencing technology patents, and in exchange Guardant Health grants Foundation Medicine a non-exclusive license to certain of its digital sequencing technology patents. Guardant Health, Inc. v. Foundation Medicine, Inc., D. Del. 1:17-cv-01616 (PTAB op. Filed Nov. 6, 2017).

"In a settlement of a patent litigation matter, you are trying to negotiate a deal between two parties that have been 'enemies' in terms of the litigation," Ballack said. "So the settlement negotiations can sometimes be quite challenging and at times, much more adversarial than a non-litigation transactional matter."

As the industry moves forward, she expects to see digital assets, blockchain technology, and NFTs become widespread in her work. She believes the pandemic has sped up the adoption of various technologies in the field.

"It can be challenging to apply existing IP laws to new technologies as they evolve," Ballack said. "Technology is moving faster than changes in the law. In that situation, as tech and IP transactional lawyers, we have an opportunity to be creative in structuring deals and addressing potential IP issues within the existing legal framework. That's when we have to put on our thinking caps and be very creative and innovative with respect to how best our clients can commercially exploit their technology and intellectual property, while protecting their rights."

--Christopher Schmidt