Ken D. Kumayama

Ken Kumayama's interest in IP law started with his undergraduate major in integrated Sciences --an interdisciplinary program covering physics, biology, chemistry and computer programming.

"In law school, I really only learned about IP litigation," he said. "I wasn't aware of transactional IP as a career path until I started at Skadden in 2011."

The commercial transactions Kumayama handles include the ownership, protection and exploitation of IP, including IP monetization strategies, development and license agreements, co-development agreements, tech joint ventures, patent and other technology license agreements, trademark and copyright license agreements.

One of his noteworthy projects involved Intel's strategic collaboration with UMC, announced earlier in the year. This complex transaction required cross-border joint development and technology transfer of a 12nm semiconductor manufacturing process.

The business rationale behind the tech joint venture was particularly interesting, Kumayama said, as it allowed Intel to secure a sophisticated partner to source customers for its foundry services business, while UMC could accelerate the development of its 12nm process.

"In Intel's transaction with UMC, as is often the case with cross-border deals, there were at times language and cultural barriers to overcome," he said. "I personally like these aspects of cross-border deals, as it is one of the things that drew me to Skadden in the first place."

Another significant project Kumayama worked on was Trimble's sale and contribution of its Agriculture Business to a joint venture with AGCO Corporation.

Unlike typical carveout transactions, both partners contributed businesses to the new entity, with Trimble holding a 15% ownership and AGCO the remainder, he said.

The Trimble Ag Business had numerous dependencies and shared IP, technology and resources. Identifying these dependencies and effectively decoupling and transitioning the Ag Business from Trimble was a complex task, which the Trimble team managed successfully due to their prior experience with carveout transactions, Kumayama explained.

"The Trimble transaction was very complicated, as the Ag Business is sprawled across several continents," Kumayama said. "Keeping track of all of the details and making sure nothing fell through the cracks was critical. I certainly couldn't have managed it all without the excellent support from the associates on the team."

Lastly, he is assisting Embracer Group in its acquisition of various IP rights to "The Lord of the Rings" and "The Hobbit" literary works.

"As a long-time fan of J.R.R. Tolkien's works, it was fascinating to review the various contracts (many of them quite old) relating to these seminal works in the fantasy genre," Kumayama said. "As a fan of video games as well, I look forward to seeing what the Embracer team does with these rights."