Overview

Toni Nguyen is a business and technology attorney with more than 20 years of experience who focuses her practice in the areas of technology transfers and intellectual property (IP) licensing (inbound and outbound), e-commerce and information technology (IT), intellectual property law and portfolio protection, general commercial transactions, mergers and acquisitions, corporate governance, and data security and privacy. She has 15 years of in-house experience, including as general counsel, advising executives and a variety of business stakeholders.   

Ms. Nguyen has extensive experience in negotiating a wide range of commercial and technology transactions in various industries. These transactions include agreements related to software development and integration, open source software issues, IT outsourcing transactions, electronic contracting, click-through and shrink-wrap agreements, supply chain and procurement, distribution, reseller agreements, sales agreements, co-marketing, referral, master services agreements, statements of work, software as a service (SaaS) related agreements, leases and warehousing agreements. She also advises clients in healthcare and biotechnology matters, including drafting and negotiating clinical study, material transfer, research and development, licensing and joint venture agreements.

Ms. Nguyen also advises businesses ranging in size from small startup and emerging growth companies to public companies with respect to various corporate and securities matters. She offers counsel on merger and acquisition support, integration of companies, IP and contract due diligence, and negotiating and structuring major commercial and IP transactions, including joint ventures and other types of strategic alliances.

In addition, Ms. Nguyen provides clients with general counseling, including matters related to corporate governance, risk mitigation and compliance, corporate policies, operations and legal management, global expansion (in Canada, Europe and Asia), dispute and litigation management, advertising and promotion law, sweepstakes and giveaways, trade secrets and copyrights.

Ms. Nguyen has advised board members and domestic and global internal teams, including executive, sales, research and development, hardware and software, project management, manufacturing, marketing, accounting, finance, audit and regulatory.

Prior to joining Holland & Knight, Ms. Nguyen served more than 15 years as an in-house attorney across a variety of industry sectors, including online travel and retail, media, biotechnology, and cloud-based enterprise software companies, giving her extensive, wide-ranging knowledge of the business, marketing and regulatory issues companies face and their impact on the companies. Immediately prior to coming to Holland & Knight, she served as senior vice president and general counsel of a publicly traded cloud-based software company.

After law school, Ms. Nguyen was a senior law clerk for the Honorable Jerry Buchmeyer of the U.S. District Court for the Northern District of Texas.

Experience

  • Preparing, analyzing and negotiating hundreds of varying outbound and inbound e-commerce, technology and patent licenses, and other intellectual property (IP) license agreements across multiple industries with varying complexity
  • Represented a biotech client to negotiate a one-of-its-kind contract with a market leader to develop a next-gen platform with projected revenues of $100 million
  • Represented a life sciences client to prepare, analyze and negotiate all of its agreements to license its proprietary technology and patented platform and microspheres for use by licensees in clinical research and diagnostic applications
  • Represented a biological testing company to negotiate and draft in-bound license agreements for enzymes and other particles for inclusion in its diagnostic assays
  • Negotiated hundreds of a wide range of software as a service (SaaS) and software license agreements with varying complexity ranging from $10,000 to multimillions in annual recurring revenues
  • Represented a medical device company to draft and negotiate a technology joint collaboration agreement to develop and manufacture an instrument for use in the bio-defense industry
  • Represented a client to secure manufacturing right and patent license for an innovative technology in exchange for the winding down of equity investment and joint development

  • Establishing form internet, sales and other commercial agreements for clients
  • Drafting and negotiating a wide range of e-commerce and other commercial agreements, including end-user license agreements, shrink-wrap agreements, click-through agreements; master services agreements, service level agreements, statements of work (SOWs), sales orders and quotes; reseller, referral, co-marketing, joint venture and partnership agreements; procurement, supply, vendor, consulting, professional services and confidentiality agreements; group purchase agreements; lease agreements; reagent rental and purchase sales agreements; and warehousing agreements
  • Represented a biotech client to forge and foster strategic channel partnerships globally with revenue greater than $125 million
  • Represented a client to negotiate and facilitate a groundbreaking partnership with a search engine and web portal company on behalf of a consortium of 12 top media companies, leading to hundreds of millions of dollars of new internet ad revenue for the client
  • Assisted and collaborated with a client to launch user-generated content capability and mobile applications for dozens of the client's websites, generating millions of dollars of incremental revenue
  • Represented a client to negotiate and nurture an ongoing equity ownership in an online automotive venture and website that was subsequently sold resulting in $78 million in cash proceeds to the client
  • Supported development and roll out of a media client's business plan for a sports website across 20 markets that won the Newspaper Association of America Award of Excellence
  • Developed and negotiated necessary form agreements and website policies to operationalize the business and launch websites for hundreds of start-up technology companies
  • Counseling clients on issues related to CAN-SPAM Act, Digital Millennium Copyright Act (DMCA), and email, texting and fax campaigns

  • Represented a client in a $50 million acquisition and integration of a cloud-based request for proposal (RFP) and sales-proposal automation software company
  • Assessed risks and conducted due diligence for a client in a $14.5 million acquisition of a customer-reference software as a service (SaaS) solution provider
  • Assessed risks and conducted due diligence for a client in a $50 million acquisition of a medical device company providing intellectual property (IP) for next-gen products expected to deliver five-year sales of $250 million
  • Conducted legal due diligence for the acquisition of and supported the integration of a $37 million acquisition on an international enterprise cloud fax and secured document distribution solution

  • Assisted a client to develop a collaborative standardized patent protection process, including invention disclosure form (IDF), quarterly patent harvesting meetings, and patent incentive program, resulting in doubling the company's patents and patent applications
  • Conducting intellectual property due diligence in connection with corporate transactions, including client mergers, acquisitions, asset purchases and financing transactions
  • Analyzing implications of utilizing open source software components in connection with proprietary code
  • Drafting and negotiating licenses, consent and coexistence agreements, assignments and domain transfer agreements
  • Counseling clients on obtaining and maintaining patent, trademark and copyright protection

  • Advising clients in healthcare and biotechnology matters, including drafting and negotiating clinical study, material transfer, research and development, joint research, evaluation, licensing and joint venture agreements

  • Established infrastructure for a client to expand into Asia, including strategic alliances, third-party logistics (3PL) and fourth-party logistics (4PL), bilingual distribution and sales agreements, and consultants to facilitate IVD product clearances
  • Enlisted for a client more than 50 distributors and numerous partners in Europe, the Middle East, India and Africa (EMEIA), Asia-Pacific (APAC) and U.S., relationships worth hundreds of millions of dollars over a three-year period

  • Developing program, policies and training for compliance with regulations and statues, including those related to anti-bribery (including Foreign Corrupt Practices Act or FCPA), the Anti-Kickback Statute (AKS), the Physician Payments Sunshine Act (PPSA), insider trading, antitrust and anti-harassment
  • Developing and providing training on social media policy, use and protection of client and third-party intellectual property, confidentiality, code of conduct, employee handbook, and internal and external communications policy
  • Generally advising clients on best corporate practices

  • Developing and drafting privacy policies, privacy statements and privacy disclosures in terms of use
  • Reviewing and drafting Business Associate Agreements (BAA) and Data Protection Agreement (DPA)
  • Advising on general privacy and data security compliance, including issues and disclosures related to Telephone Consumer Protection Act (TCPA), Children's Online Privacy Protection Act (COPPA), Health Insurance Portability and Accountability Act (HIPAA) and EU General Data Protection Regulation (GDPR)

Credentials

Education
  • Southern Methodist University Dedman School of Law, J.D., cum laude
  • The University of Texas at Austin, B.A., Journalism and Government, with honors
Bar Admissions/Licenses
  • Texas
Memberships
  • Austin Asian American Bar Association, 2011-Present
  • Dallas Asian American Bar Association, Director, 1997-2011
  • Texas General Counsel Forum, Member, 2015-2017; Board of Directors, 2016-2017
  • State Bar of Texas, Asian Pacific Interest Section, Chair, 2000-Present; Council Member, 2002-Present
  • State Bar of Texas, Board of Directors, 2010-2013
  • State Bar of Texas, Corporate Counsel Section, Board Member, 2013-Present
  • State Bar of Texas, Intellectual Property Law Section, 2003-Present
  • State Bar of Texas, Public Affairs Committee, 2013-2016
  • State Bar of Texas, Advanced In-House CLE, Co-Director, 2016-2018
  • Legal Aid Ministries, Co-Founder and Board of Directors, 2008-2010
  • National Charity League, Hills of Austin Chapter, 2017-Present
  • Television Music Licensing Committee, Board of Directors, 2006-2011
Honors & Awards
  • D Magazine, Best Lawyer Under 40, 2004
  • Dallas Business Journal, Best Corporate Counsel, 2009
  • Best Lawyer Under 40, National Asian Pacific American Bar Association, 2009
  • Justice David Wellington Chew Award, State Bar of Texas, Asian Pacific Interest Section, 2014
  • Corporate Counsel of the Year Finalist, Texas Minority Corporate Program, 2015
  • Texas Lawyer, "Up and Coming" In-House Attorney, 2004
  • Order of the Coif
  • Order of the Barristers
Spoken Languages
  • English
  • Vietnamese

Speaking Engagements

News