Tyler Maddry

As co-head of the firm’s Intellectual Property Practice Group, Tyler focuses his practice on complex intellectual property and technology contracts. Tyler represents clients ranging from Fortune 100 companies to startups in structuring, drafting and negotiating complex intellectual property and technology contracts, including patent and technology license agreements, joint development agreements, master services agreements, software licenses, software as a service (SaaS) agreements, data licensing, API license agreements, technology escrow agreements, trademark license agreements, university license agreements, and IP and technology transfer agreements. He also has extensive experience in structuring and negotiating IP and technology provisions in M&A transactions, conducting IP and IT due diligence investigations, advising on open source software compliance, litigation of intellectual property rights, and resolution of IP and technology contract disputes. His practice covers a range of industries, including energy, life sciences, fintech and blockchain, artificial intelligence (AI) and machine learning (ML), and information technology.

Tyler is a member of the Licensing Executives Society and is admitted to practice before the U.S. Court of Appeals for the Federal Circuit and the U.S. District Courts for the Eastern District of Virginia and Eastern District of Texas. He is also registered with the U.S. Patent and Trademark Office.

• Regularly represents major companies in structuring and negotiating IP and technology terms in M&A and corporate transactions, including asset purchase agreements, stock purchase agreements, and merger agreements, drafting and negotiating associated IP and technology license agreements, IP assignments, and services agreements, and conducting IP and IT due diligence investigations.
• Represented major private equity firm in negotiating contract terms for use of GitHub Copilot generative AI technology for software code generation, including use restrictions on input data and output content, confidentiality, and IP indemnification for use of generated output.
• Represented global life sciences and diagnostics company in negotiating numerous agreements with leading universities and research institutions for development of next generation technologies including digital biomarkers for neurosurgery, phenotyping engine using AI models for drug screening, CRISPR gene editing for treatment of rare diseases, sepsis subtyping based on gene expression using AI models, prediction of breast cancer HER2 antibody-drug conjugate treatment response, and diagnosis and monitoring of traumatic brain injury.
• Drafted client policies and procedures for use of generative AI, including formation of AI committee, designation of approved and prohibited AI systems, AI contract terms and vendor management, procedures for protection of client data and intellectual property, and employee training.
• Represented firm in negotiating contract terms for use of generative AI in legal industry technologies including protection of proprietary input data, restrictions on use of output, and IP indemnification for use of AI-generated output.
• Represented medical device manufacturer in negotiation of agreements for development and commercialization of imaging devices incorporating machine learning models for applying virtual stains to tissue sample images and for diagnosis of cancer in medical images.
• Represented nuclear innovation company in drafting and negotiating technology license and collaboration agreements, subrecipient agreements and subcontracts for development and commercialization of next generation sodium fast reactors, molten chloride fast reactors, and versatile test reactor with industrial collaboration partners under US Department of Energy cooperative agreements.
• Represented 3D printer manufacturer in drafting and negotiation of IP and technology license agreements, IP terms in M&A transactions, and joint development, technology escrow, and end user agreements relating to 3D printers and integrated technologies and services for industrial and life sciences applications.
• Represented provider of employee engagement technology in drafting and negotiation of subscription agreement including IP terms for ownership and licensing of machine learning model components and related training data, methods of training and model output.
• Represented developer of cybersecurity technology for electric grid in drafting and negotiation of IP and technology license agreements for development and deployment of cybersecurity technology.
• Represented independent system operator in drafting and negotiation of master services agreement using agile development model and open source software for development of energy data platform for energy market participants.
• Represented patent licensor against leading pharma company in negotiation of settlement of royalty dispute relating to patents on lipase inhibitors for treatment of obesity.
• Represented startup against major pharma company in negotiation of patent license for PCSK9 inhibitors relating to cholesterol reduction.
• Represented leading technology company in acquisition of provider of load testing platform having extensive open source software component.
• Represented early stage company providing software-based voice trading system in negotiation of numerous master services agreements.
• Represented medical device manufacturer in drafting and negotiating development agreement, quality agreement and trademark license for the international development and commercialization of technology relating to fluorescent in situ hybridization (FISH) probes for cancer detection.
• Represented Fortune 100 company in drafting and negotiating international research collaboration agreement relating to imaging agents comprising proprietary compounds for the detection of Alzheimer’s disease.
• Represented developer of debt trading technology in drafting and negotiation of patent and technology licensing and services agreement with leading financial information services provider.
• Represented Fortune 100 company in drafting and negotiating license agreement relating to imaging agents comprising proprietary peptides for cancer detection.
• Represented pharmaceutical company in negotiating sublicense and commercialization agreement relating to pharmaceutical composition for treatment of hypertension.
• Represented mortgage services technology company in negotiating services agreements with complementary technology providers.
• Represented IT, cloud, and cybersecurity services company in licensing and protection of its technology and intellectual property and in resolution of numerous contract disputes.
• Represented manufacturer of network security hardware and software in negotiation of agreements for combined cloud-based and on-premises network security solution for mitigation of distributed denial of service (DDoS) attacks.
• Represented major financial institutions in defense and settlement of lawsuits and infringement allegations by patent assertion entities.
• Represented medical device company in settlement and license negotiations relating to hip prosthesis patents.
• Represented medical device manufacturer in licensing of optical imaging technology.
• Represented pharmaceutical company accused of infringing patents to abuse-resistant opioid products in licensing and litigation settlement negotiations.
• Represented pharmaceutical manufacturer in negotiation of license, development and commercialization agreement relating to opioids.
• Represented manufacturer of magnetic resonance imaging (MRI) machines in patent interference proceeding, appeal, and worldwide licensing and settlement negotiations.
• Represented manufacturer of test and measurement equipment in negotiation of joint development agreement and supply agreement relating to thermal imaging technology.
• Represented patent owner, NTP, Inc., in drafting and negotiating license and settlement agreements to settle patent litigation against the manufacturer of the BlackBerry® wireless handheld in NTP, Inc. v. Research in Motion, Ltd. Obtained substantial settlement for client, NTP, Inc.
• Represented Fortune 100 company in negotiation of international license agreement relating to locomotive technology.
• Represented manufacturer of industrial equipment in international license dispute relating to steel manufacturing equipment.
• Represented developer of carbon and acid gas capture technology in negotiation of collaboration and license agreement with electric power generator.
• Represented power plant developer in negotiation of intellectual property provisions in engineering, procurement and construction contract for development of solar power generation facility.
• Represented industrial printer in acquisition of newspaper printing technology and equipment from global manufacturer of imaging products.
• Represented manufacturer of paper shredders in patent infringement lawsuit through discovery, claim construction, summary judgment motions, and trial.
• Represented designer of memory chips in patent infringement and interfering patents suit.
• Represented Fortune 100 company in patent assertion against manufacturer of digital cameras.
• Drafted and negotiated numerous other license agreements for domestic and international transfer of intellectual property rights including patent, technology, software, and trademark license agreements.
• Prepared formal opinions on patent validity, enforceability and infringement.
• Conducted patent clearance studies to identify potential infringement issues for new product introductions.
• Prepared and prosecuted patent applications in financial services (including blockchain technology), medical device, mechanical, and electromechanical arts.

• Recommended for Patents: Licensing (2019-2021), Patents: Litigation (Full Coverage) (2019-2020), Patents: Prosecution (2019), Technology Transactions (2019, 2023-2024), Trademarks: Litigation (2021-2024), and Trademarks: Non-Contentious (2021-2024), Legal 500 United States

• Recommended for Patent Transactions in Washington, DC in the IAM Patent 1000 (2022-2024), Intellectual Asset Management

• Member, Licensing Executives Society