Patents: licensing in United States
DLA Piper LLP (US) impresses with its experience in advising on the licensing components of major transactions, such as covenants not to sue and covenants to exhaust rights; its long track record of negotiating settlement agreements in the context of patent disputes, especially those involving non-practicing entities; and its strength in negotiating and drafting licensing agreements aimed at further developing bio- and other technologies. Additionally, the practice frequently assists with patentability, validity and freedom-to-operate issues as part of its patent portfolio management offering. The team is especially active at the intersection of the life sciences and the technology sectors, but also excels in a range of other sectors, notably the manufacturing and technology sector as a stand-alone sector. Cross-border matters account for the bulk of the caseload as clients come from the US, Asia Pacific and Europe, especially the UK. The San Diego-based Mark Lehberg co-chairs the global commercial contracts practice alongside the Paris-based Gregory Tulquois, Victoria Lee in the Silicon Valley office is the global chair of the technology sector practice and East coast duo Larissa Bifano and Daniel Christenbury, in Boston and Philadelphia respectively, co-chair the US patent prosecution practice.
Mark Lehberg; Victoria Lee; Larissa Bifano; Daniel Christenbury
Other key lawyers:
Jeffrey Aronson; Richard Friedman; Chung Wei; Matthew Satchwell
‘Flexible and creative negotiation capability.‘
‘Matthew Satchwell and Shuzo Maruyama have great experience in representing international clients and always handle the matters very efficiently. Mr. Satchwell’s flexible negotiation style is especially great.‘
Aegis Therapeutics, LLC
Mazda Motor Corporation
Qualcomm Incorporated and Qualcomm Technologies
Sanford Burnham Prebys Medical Discovery Institute
Softbank Group Corporation
University of Texas at Austin
Volvo Car Corporation
- Represented Qualcomm Technologies in the divesture of Qualcomm Life, which included the sale of technology, patents, trademarks, copyrights and the licensing of intellectual property.
- Represented Qualcomm Incorporated in connection with its sale to WiTricity of Qualcomm’s wireless electric vehicle charge business and assets located around the world, including the sale of patents, other intellectual property, technology and other assets and the licensing of intellectual property.
- Assisted Nike, Inc. with the preparation and negotiation of licensing agreements through the acquisition of new and emerging technologies, for example with its acquisition of Celect, Inc., a provider of retail predictive analytics and demand sensing software solutions.
- Represented the University of Texas in providing sample agreements associated with technology transfers, patent licensing, joint ventures and ownership.
- Assisted Softbank Group Corporation with its investments in, inter alia, Slack, Petuum and a hardware startup company, performing a due diligence review on the intellectual property and commercial and technology transactions of the target companies and handling the intellectual property-related aspects of the transactions.
Fenwick & West LLP's technology transactions team demonstrates particular strength in the conduct of due diligence in the context of internal IP audits, mergers and acquisitions and other strategic transactions, frequently acting on the biggest transactions in the market. University and research institutes also rely on the skills of the team based around practice heads Jake Handy, who splits his time between the San Francisco and Seattle offices, and Michael Farn in the Mountain View office. Another area of strength is the negotiation of licensing agreements on behalf of offices of technology transfer for private companies. The life sciences and technology sectors are the practice's home turf and the firm itself also invests in cutting-edge technology, including its award-winning artificial intelligence digital assistant 'Fenni'. The team also includes the renowned David Hayes in San Francisco and Andrew Klungness, who joined from Bryan Cave Leighton Paisner LLP in September 2019, adding his transactional expertise as well as his experience in advising on IP and commercial issues regarding digital platforms. Michael Shuster and Kevin Kabler joined Goodwin in February 2019.
Jake Handy; Michael Farn
Other key lawyers:
Stefano Quintini; Stephen Gillespie; Vejay Lalla; Jonathan Millard; David Hayes; Ralph Pais
Blue Vision Labs
M ss ng P eces
- Represented DexCom and ResMed in transactions with Verily Life Sciences specialising in the collection and organization of health data: assisted DexCom with the conclusion of a collaboration and license agreement and assisted ResMed with the agreement to form a new joint venture with Verily Life Sciences.
- Advised Loxo Oncology on its agreement to be acquired by Eli Lilly and Company, at approximately $8bn one of the largest life sciences acquisitions in 2019.
- Advised GitHub, Inc. on the patent licensing aspects of its $7.5bn acquisition by Microsoft.
- Represented Halozyme Therapeutics in the licensing of the client’s ENHANZE drug-delivery technology to Roche for the exclusive development of a new clinical stage therapeutic target with an option to add two additional targets within four years.
- Assisted Denali Therapeutics with the management of numerous high-value collaborations and transactions.
IP giant Finnegan, Henderson, Farabow, Garrett & Dunner LLP is especially adept at negotiating and drafting license and collaboration agreements, but is also very well versed in due diligence matters and settlement agreements in the context of disputes, including arbitration proceedings. The group covers a wide range of sectors, including the manufacturing, biotechnology, consumer product and pharmaceutical sectors. While the practice's main presence is in the US, with core practitioners Brian Kacedon and Doris Johnson Hines in the Washington office and other important bases in Atlanta, Reston and Boston, the firm also has offices in Asia and regularly joins forces with colleagues from the Taipei, Tokyo and Shanghai offices to cover matters with cross-border components. The practice is a sought-after adviser for major licensing agreements, but also assists start-ups with the development of their patent portfolios. Anand Sharma and Mark Sweet are the heads of the practice.
Anand Sharma; Mark Sweet
BrainScope Company, Inc.
Principia Biopharma Inc.
Roivant Sciences GmbH
- Represented Roivant Sciences and its subsidiaries in negotiating and drafting multiple worldwide license and collaboration agreements, including a multi-program license and collaboration deal with MediGene AG relating to T-cell immunotherapy.
- Represented Roivant and its subsidiaries in due diligence in connection with an agreement with Oxford Biomedica relating to AXO-Lentil-PD, a lentivirus gene therapy for the treatment of Parkinson’s disease, a deal involving a potential total of $842.5m in payments.
- Assisted AbbVie Inc. with multiple licensing agreements, including the review of draft settlement agreements, the evaluation of existing collaboration agreements and licenses and confidential arbitrations.
- Provided ongoing advice to CSL Limited, a global special biotherapeutics company and Australia’s largest biotech company, regarding prosecution, freedom-to-operate analyses and due diligence in the areas of medical devices, pharmaceuticals and vaccines.
- Represented Roivant and its subsidiaries in due diligence in connection with the agreement with HanAll Biopharma relating to an anti-FcRn monoclonal antibody for the treatment of certain autoimmune diseases, a deal estimated at approximately $500m.
The team at Jones Day fields a varied caseload that includes high-profile licensing agreements in the context of strategic alliances and cooperations, patent portfolio analysis and licensing agreement negotiations in the context of venture capital and other private equity transactions, and assistance with the transfer of IP rights in mergers and acquisitions. Joint research and development agreements are another area of strength. Matters often involve a cross-border element, allowing the group to leverage its wide geographical footprint. The practice stands out through its strength in cybersecurity and artificial intelligence-related work, but impresses across a wide sector range, including in matters pertaining to other technologies and the life sciences and pharmaceutical sectors, as well as in consumer products and manufacturing. Silicon Valley's Joseph Melnik and Warren Nachlis, who splits his time between New York and Boston, are the co-chairs of the licensing and technology transactions group, a part of the firm's global IP practice under the lead of the San Diego-based Anthony Insogna. An Doan in Silicon Valley and Scott Lyne in New York made partner in January 2019 while John Wehrli joined Wilson Sonsini Goodrich & Rosati in June 2019.
Joseph Melnik; Anthony Insogna
Sumitomo Dainippon Pharma
Educational Testing Service
- Advised NVIDIA on the intellectual property, technology and commercial aspects on the due diligence of its approximately $6.9bn acquisition of Mellanox and on the negotiations of the transaction documents, including assistance with computer and artificial intelligence legal issues.
- Advised artificial intelligence and cybersecurity player Cylance on its $1.4bn acquisition by BlackBerry Limited, a highly strategic acquisition by BlackBerry, involving an evaluation of all of the potential IP risks related to the sale of Cylance and its industry-leading cybersecurity technology, and negotiation of related contractual provisions.
- Represented Sumitomo Dainippon Pharma in the acquisition of late stage biopharma companies from and the formation of an alliance with Roivant Sciences, including the negotiation of the terms of the strategic alliance.
- Assisted Incyte Corporation with its sub-licensing agreement with Zai Lab Limited through which Incyte licenses out certain intellectual property rights regarding an anti-PD1 molecule that was licensed to the client from MacroGenics globally in 2017 and that the client develops further in the US and other jurisdictions outside of China.
- Represented Incyte Pharmaceuticals in its strategic collaboration and license agreement with Innovent Biologics for the regulatory development and commercialization in China of three clinical stage pharmaceutical candidates, a FGFR1/2/3 inhibitor, a JAK1 inhibitor, and a PI3K delta inhibitor, for the treatment of hematological and oncological diseases.
Morrison & Foerster LLP combines a wide geographical footprint with broad sector expertise, making for particular strength in multi-jurisdictional matters for a varied base of stellar technology clients. Semiconductor, software technology and life sciences clients as well as blockchain, fintech, AI and virtual and augmented reality players rely on the group's experience in technology transactions. Matters range from the patent licensing aspects of mergers and acquisitions to the licensing components of the development and commercialization of new products and services. Outsourcing agreements and collaboration agreements also appear in the caseload. Practice head Aaron Rubin in San Francisco is the main contact. Technology transaction specialist Matthew Karlyn joined the Boston office from Foley & Lardner LLP in April 2019.
Other key lawyers:
Tessa Schwartz; Paul Jahn; Stephanie Sharron; Rufus Pichler; Vivian Hanson
Vista Equity Partners
- Advised Salesforce, the global leader in CRM, on the intellectual property and privacy aspects associated with the company’s $15.7bn acquisition of Tableau Software.
- Represented ON Semiconductor in its acquisition from GlobalFoundries of East Fishkill and negotiating a license of advanced CMOS technology.
- Advised Vista Equity Group, the consulting arm of Vista Equity Partners, on various agreements and diligence related to monetizing data from many of Vista’s portfolio companies.
- Advising a carbon removal venture company on a joint development agreement to advance a breakthrough technology that can capture and concentrate carbon dioxide emissions from industrial sources, including power plants, and the atmosphere.
- Represented SoftBank in a number of transactions to invest in early stage robotics companies, including in its proposed investment in preferred stock of Bear Robotics, Inc., a California-based start-up in the robotics and artificial intelligence space.
Weil, Gotshal & Manges LLP's dedicated technology and IP transactions team fields a busy caseload composed of stand-alone licensing work and matters involving the patent aspects of M&A, private equity, financing and restructuring transactions. Mainly known for its track record in high-stakes strategic transactions, the group is also very well versed in assisting with research and development collaborations, licensing agreements, co-marketing arrangements, outsourcing transactions, professional services agreements and e-commerce agreements. With practice head Michael Epstein in New York and a strong Silicon Valley office, the group is present on both coasts and assists an impressive list of clients located in either area, including technology, life sciences, electronics and software companies.
Other key lawyers:
Jeffrey Osterman; Charan Sandhu; Karen Ballack
Brookfield Asset Management
The Campbell Soup Company
Carlin America, Inc.
Eli Lilly / Elanco Animal Health Incorporated
First Data Corporation
General Electric Company
Getty Images, Inc.
The Kroger Company
Nexeo Solutions, Inc.
Oneida Indian Nation
Scripps Networks Interactive, Inc.
Signet Jewelers Limited
SoftBank Group/SoftBank Vision Fund
Special Committee of World Wrestling Entertainment, Inc. (d/b/a WWE)
Westinghouse Electric Company, LLC
- Advised Eli Lilly on the approximately $8bn acquisition of Loxo Oncology, Inc., a biopharmaceutical developer and commercializer of highly selective medicines for patients with genomically defined cancers.
- Advised Eli Lilly on its global licensing and research collaboration with an affiliate of ImmuNext Inc., focused on the study of a preclinical novel target that could lead to potential new medicines for autoimmune diseases by regulating immune cell metabolism.
- Advised Sanofi, together with Regeneron Pharmaceuticals, on the technology & IPaspects of an amendment and restatement of their immuno-oncology discovery agreement, a collaborative approach to the development of new immuno-oncology cancer treatments.
- Advised Total S.A. (France) on the technology & IP aspects of its pending $8.8bn acquisition of all of the oil and natural gas assets, liabilities, businesses and operations of Anadarko Petroleum Corporation in each of Algeria, Ghana, Mozambique and South Africa, in connection with the merger between Anadarko and Occidental Petroleum Corporation.
- Advised athenahealth, Inc. on the technology & IP aspects of its $5.7bn sale to Veritas Capital and Evergreen Coast Capital and planned combination with Virence Health.
Baker Botts L.L.P. combines longstanding experience in patent due diligence with a strong patent portfolio management offering. Able to assist with complex multi-party licensing agreements in acquisition, distribution, outsourcing or research contexts, the group regularly advises major players from a broad spread of sectors, including the technology, life sciences, automotive, electronics and manufacturing sectors, and is also well versed in licensing work for education sector clients. Thanks to the practice's close ties with the litigation team, the group is very experienced in licensing work in the context of impending litigation and litigation settlements. New York's Robert Scheinfeld took over as chair of the IP practice from Barton Showalter in Dallas. Christa Brown-Sanford, also Dallas-based, is the deputy chair of the practice. Washington DC's Luke Pedersen directs the technology transactions group. Michael Sartori, a patent attorney, joined the Washington DC partner ranks from Venable LLP in January 2019.
‘I found a very experienced and knowledgeable team. The team is very structured, very helpful, knows very well how to move forward to the best of their client’s interest. Moreover, they are very client-oriented, reactive and do not try to make money by providing lengthy advice. The fees are high, but in the range of what you find in New York (or even less than certain other firms). I also appreciate having access to the lead counsel.‘
‘Paul Ragusa is a bright lawyer, very successful in the case he handles. Even when he is very busy on other cases, he remains very accessible, very reactive and I trust all his advice.‘
‘Paul Ragusa is a king of client service. He is a consummate professional who routinely provides high-quality legal advice.‘
‘The team delivers a high-quality work product at very reasonable rates.‘
Broadcom (CA Technologies)
Cisco Systems Inc.
University of Pennsylvania
Brother Industries Ltd.
American Industrial Partners
- Management of a patent prosecution docket on behalf of Broadcom, Inc., including intellectual property due diligence in mergers and acquisitions.
- Assisted Strattam Technologies and its portfolio companies with all technology, software and intellectual property due diligence in the context of mergers, acquisitions, divestitures and investments, the drafting and negotiation of related provisions and the integration of related activities.
- Represented Facebook in the development and management of its worldwide patent portfolio across a wide range of technologies, including assistance with due diligence in the context of acquisitions and the drafting and negotiation of related agreements.
- Assisted Columbia University with the development and management of its worldwide patent portfolio covering a wide range of physical and life sciences technologies.
- Represented Halliburton in licensing matters, including the drafting of licensing agreements, the negotiation of licensing transactions and assistance with due diligence investigations.
Foley & Lardner LLP
Foley & Lardner LLP fields a varied caseload that ranges from due diligence in the context of M&A transactions to university and research center licensing agreements, joint development agreements and strategic partnership agreements involving patents. The pharmaceutical, biotechnology and healthcare sectors remain the group's key sources for matters, but the practice also has experience in a range of other industries, including the semiconductor and technology industries. Clients include major domestic and international players, including several Japanese giants. Michele Simkin and Andrew Rawlins direct the practice from the Washington office. Other patent licensing hubs are in Milwaukee with Scott Anderson and in San Diego with Beni Surpin. Technology transactions expert Matthew Karlyn joined Morrison & Foerster LLP in Boston in April 2019.
Michele Simkin; Andrew Rawlins
Alatalab Solutions, LLC
Briggs & Stratton Corporation
Calsonic Kansei Corporation
Cyprium Therapeutics, Inc.
FuelCell Energy, Inc.
iHealth Labs, Inc.
Johnson Controls, Inc.
J. Craig Venter Institute
Kraft Foods Group Inc.
Lacerta Therapeutics Inc.
Menarini Silicon Biosystems S.p.A.
New York University
Nissan Motor/JATCO Ltd.
Rockwell Collins, Inc.
S.C. Johnson & Son, Inc.
Stryker Corporation/Make Surgical Corp.
Sumitomo Dainippon Pharmaceutical
Takeda Pharmaceutical Company
VanDyne Superturbo, Inc.
- Represented Sumitomo Dainippon Pharma regarding complex IP due diligence for their largest transaction to date, a strategic alliance with Roivant Sciences.
- Represented Lacerta Therapeutics in licensing its rights to develop and commercialize its IP and technology on a worldwide basis for treating Pompe disease to Sarepta Technologies.
- Represented the Adelson Research Medical Foundation in negotiating cutting-edge patent licensing structures and related IP commercialization agreements with over 40 medical institutions and universities in the US and abroad.
- Represented ARM China in the renegotiation of some of its previously granted patent and other IP rights in the context of the SoftBank/Hou-An joint venture.
- Represented the Children’s Healthcare of Atlanta and the Marcus Autism Center in a significant spin-off of certain of its early-autism detection technologies.
Goodwin assists domestic and international clients with all licensing matters arising along their business life cycle, from the structuring and evaluation of patent portfolios at the growth stage to the design and implementation of licensing structures to enable and facilitate commercialization, including research and development agreements and collaboration agreements. The practice is particularly active for venture-backed companies and the patent procurement services of academic institutions whom it regularly assists with the licensing aspects of financings, including public offerings, and M&A transactions. The life sciences and technology sectors account for the bulk of cases taken on by the team of practice heads Christopher Denn in Boston and James Riley in the Silicon Valley office. The firm's adjacent teams in regulatory and compliance, tax, employent, data privacy and litigation allow clients to entrust complex cases to the firm in their entirety. Life sciences experts Michael Shuster and Kevin Kabler, based in Boston and San Francisco, joined from Fenwick & West LLP in February and March 2019 respectively. Sanjeet Dutta, whose experience includes blockchain and cybersecurity-related matters, joined from Steptoe & Johnson LLP the following April, with new arrival Lily Wound, a pharma and biotechnology specialist formerly at WilmerHale, strengthening the New York office.
Christopher Denn; James Riley
Other key lawyers:
Kevin Lam; Robert Puopolo; Karen Spindler; Kingsley Taft; Sarah Solomon; Erini Svokos; Stephen Charkoudian
Before Brands, Inc.
Continuum IT Management
- Represented Before Brands, specialists in early childhood food allergy prevention, in a complex, multi-faceted financing and collaboration agreement with Nestlé Health Science.
- Represented CRISPR Therapeutics in its strategic collaboration and license agreement with Vertex Pharmaceuticals to discover and develop gene editing therapies for the treatment of DMD and DM1.
- Represented Codiak BioSciences in its strategic collaboration with Jazz Pharmaceuticals, involving a worldwide, royalty-bearing license to develop, manufacture and commercialize therapeutic candidates directed at five targets to be developed using Codiak’s engEx precision engineering platform for exosome therapeutics.
- Represented Qualtrics in the IP due diligence of its $8bn sale to SAP SE, the Germany-based market leader in enterprise application software.
- Advised insitro on its $1bn strategic collaboration with Gilead Sciences.
Kirkland & Ellis LLP acts for licensors and licensees alike, thereby offering clients experience in negotiating from both ends of the table. The practice regularly assists with joint development agreements, supply agreements and agreements pertaining to the provision of services and technical assistance. Another area of strength is the development and implementation of patent licensing programs, often by way of corporate transactions, such as joint ventures or divestitures, but also by way of securitisations, synthetic royalties, royalty buy-outs and royalty interests. The arrival of Shellie Weisfield Freedman from Gibson, Dunn & Crutcher LLP in January 2019 bolstered the group's New York bench. Fellow New Yorker David MacDonald and the Chicago-based Seth Traxler, Neil Hirshman, Matthew Colman and Adam Petravicius are the other key contacts.
Other key lawyers:
EUSA Pharma, Inc.
Nexus Capital Management
Open Invention Network
Sun Pharmaceutical Industries
- Represented Nexus Capital Management in its carve-out acquisition of Pearson’s K-12 business, including several ancillary agreements, and patent, software and content licenses.
- Represented Samumed LLC in its exclusive license agreement with United Therapeutics Corporation for the North American rights to Samumed’s SM04646, which is being developed for the treatment of idiopathic pulmonary fibrosis (IPF).
- Advised Danaher Corporation on its definitive agreement with General Electric to acquire the BioPharma division of GE Life Sciences for a cash purchase price of $21.4bn, involving a major intellectual property cross-license for patent and other IP that addresses the retained and sold businesses as well as the ‘white space’ business opportunities between and adjacent to the retained and sold businesses.
- Assisted long-term client Open Invention Network on joint venture and licensing matters with the patent issues arisen from Microsoft joining Open Invention Network, involving the opening up of 60,000 Microsoft patents as open source.
- Advised Sun Pharmaceutical Industries Ltd. on its licensing and collaboration agreements and opportunities with respect to tildrakizumab, the client’s biologic for the treatment of plaque psoriasis, which was approved by the FDA this year under the brand name Ilumya, including an exclusive collaboration with China Medical System Holdings Ltd. (CMS) for the development and commercialization of tildrakizumab in Greater China.
Orrick, Herrington & Sutcliffe LLP stands out through its stellar track record of assisting start-ups and major international technology companies with their patent licensing needs. The group is among the most active advisers for clients from the start-up and venture capital space, including work for a significant number of unicorns. In addition to its busy transactional practice, the group also demonstrates strength in licensing-related disputes and in settlement agreements in the context of litigation. With clients including not only patent owners, but also underwriters and investors, the team is able to guide clients through licensing issues with a 360 degree view of potential pitfalls, ensuring a successful outcome. The firm opened a new office in Boston in 2019, specialising in cybersecurity and privacy law, and continues to expand its already extensive client base. Timothy Greene, who splits his time between the Los Angeles, Santa Monica and Silicon Valley offices, became a partner in January 2019. The Silicon Valley-based Daniel Yost and the New York-based Glynna Christian share the lead of the practice.
Glynna Christian; Daniel Yost
Other key lawyers:
Timothy Greene; Nikki Mondschein
‘The Orrick team is very experienced for IP litigation and lP licensing matters. Their legal service is efficient and reliable and based on deep analysis of the case/matter. They effectively use the competent associates whereby the fees are controlled at a reasonable level.‘
NTT DOCOMO, INC.
Vitech Systems Group Inc.
Tesla Energy Inc. (Tesla Motors, Inc.)
Gilead Sciences, Inc.
Vital Connect, Inc.
Twist Bioscience Corporation
Upstart Holdings, Inc.
- Advised Vitech Systems Group Inc. on licensing matters related to its majority stake acquisition by CVC Capital Partners.
- Advised Convoy on licensing matters related to its $400m series D financing round, including the negotiation of IP-related representations and warranties with Convoy’s investors.
- Advised VeriSign, Inc. on licensing matters in relation to the sale of its security services product suite to Neustar, Inc.
- Represented Tesla Motors, Inc. in connection with licensing, global warranties and terms & conditions matters for Powerwall, a rechargeable lithium-ion battery.
- Represented Twist Bioscience Corporation in connection with a range of licensing matters, including the licensing aspects of the client’s acquisition of Genome Compiler Corporation.
Ropes & Gray LLP impresses with its excellence in biotech and other life sciences licensing matters. Strategic research collaboration agreements are an area of particular strength, often involving cross-border elements, but the group also offers in-depth expertise of the licensing aspects of financings, of due diligences and of commercialization license agreements. The team covers a wide range of sectors for start-ups and major international players alike, including clients from the technology, software, and consumer products sectors. Practice head David McIntosh directs the team from the Boston office, the firm's key patent licensing hub. Silicon Valley's Megan Baca is also noted. The arrival of technology transactions and privacy and cybersecurity specialist Violetta Kokolus in the New York office from Dechert LLP in May 2019 and the promotion of Bostonian life sciences expert Amanda Austin to partner in November 2019 increased the practice's weight in the market.
Other key lawyers:
Edward Black; Megan Baca; Marc Rubenstein; Mark Bellomy; Hannah Freeman
Bain Capital, LP
Sarepta Therapeutics, Inc.
Sana Biotechnology, Inc.
Domino’s Pizza, Inc.
Blueprint Medicines Corporation
Altius Institute for Biomedical Sciences
The Independent Transactions Committee of the Board of Directors of Akcea Therapeutics
M/A-COM Technology Solutions Holdings Inc.
Juno Therapeutics, Inc.
TPG Capital, L.P.
TSG Consumer Partners LLC
Selecta Biosciences, Inc.
Los Angeles Biomedical Research Institute (LA BioMed)
Lyell Immunopharma, Inc.
- Represented longstanding client Sarepta Therapeutics in an exclusive license agreement to obtain the rights to Nationwide Children’s Hospital’s gene therapy candidate, calpain3 to treat Limb-girdle muscular dystrophy type 2A, as well as in a collaboration and license agreement with North Carolina biotech StrideBio Inc. to develop gene therapies for up to eight central nervous system and neuromuscular targets.
- Represented Beam Therapeutics in a strategic collaboration agreement with biotechnology company Verve Therapeutics, Inc. that focused on CRISPR and gene editing technologies for cardiovascular disease, as well as in an exclusive cross-license agreement with Japanese biotechnology company Bio Palette Co., Ltd.that focuses on developing gene editing technologies for use in various fields, including agriculture and the microbiome.
- Represented Sana Biotechnology in a license agreement with the University of California San Francisco (‘UCSF’) pursuant to which Sana received an exclusive license to certain technology pertaining to engineered cell technology developed at UCSF, and in a license agreement with Harvard University pursuant to which Sana received an exclusive license to certain platform technology for producing hypoimmunogenic stem cells.
- Advised CANbridge Pharmaceuticals Inc. on an exclusive licensing agreement in China with South Korean company GC Pharma to commercialize Hunterase, a replacement therapy for the treatment of Hunter Syndrome.
- Represented Goldfinch Bio in its license agreement with Takeda Pharmaceuticals for global rights to a preclinical, peripherally restricted cannabinoid receptor 1 monoclonal antibody for the treatment of rare and metabolic kidney diseases.
Cleary Gottlieb Steen & Hamilton
Cleary Gottlieb Steen & Hamilton fields a caseload rich in matters requiring not only in-depth patent licensing experience, but also expertise in dispute resolution, corporate and financing law, tax, restructuring and antitrust matters. The practice primarily attracts multi-jurisdictional matters and regularly joins forces with colleagues from the Paris office to offer seamless advice across country borders. The stellar list of large-cap transactions for which the practice acted on the patent licensing aspects is a clear stand-out feature, especially in the technology sector. Daniel Ilan and David Harrington form the duo at the helm of the practice. Len Jacoby joined Cooley LLP in March 2020.
Daniel Ilan; David Harrington
Other key lawyers:
- Advised Alphabet/Google on the intellectual property aspects of a number of transactions where analysis of patent license issues was a key element of the transaction, including the acquisitions of Fitbit ($2.1bn), Looker ($2.6bn) and Fossil’s smartwatch technology assets.
- Advised Honeywell on the spin-off of its Homes business, involving a strategic patent cross-licensing agreement pursuant to which Honeywell and Resideo granted each other the rights to use significant patent portfolios under a long-term license.
- Represented Lavazza on patent acquisition and licensing matters related to its acquisition of Mars Drinks.
- Represented Thales on patent licensing matters related to the sale of its General Purpose Hardware Security Module business to Entrust Datacard.
- Represented ESL on patent licensing matters related to the $5.2bn acquisition of Sears.
Hunton Andrews Kurth LLP combines broad sector coverage with a highly technical team that includes a number of practitioners with science and engineering degrees as well as in-house experience. The medical device, pharmaceutical and bioinformatics sectors remain significant sources of licensing work for the team, but the caseload also includes clients specializing in telecoms, electronics, financial services and industrial equipment. As part of a full-service firm, the group can draw on the firm's strengths in related practice areas, such as cybersecurity and privacy, corporate, tax or antitrust. The heads of the practice are John Flock and James Rosini in New York and Washington DC trio Tyler Maddry, John Gary Maynard and Michael Oakes. Other key lawyers are based in the Houston office. Throughout 2019 Shawn O’Dowd joined Banner & Witcoff, Ltd. in Washington DC, Rose Cordero Prey and Robert King joined Greenberg Traurig LLP, in New York and Atlanta respectively, Eric Hanson joined Polsinelli PC's Atlanta office and James Mahon became in-house counsel at NET Power, LLC.
John Flock; Tyler Maddry; John Gary Maynard; Michael Oakes; James Rosini
Other key lawyers:
Gary Abelev; Gregory Porter; Jeffrey Dodd; Paul Ackerman
Asator Global Technologies
Molecular Rebar Design LLC and Bio-Pact
Memorial Sloan Kettering Cancer Center
Trustees of Columbia University in the City of New York
New York University
Reveal Energy Services
- Assisted Asator Global Technologies with a variety of intellectual property services, including licensing and other transactions.
- Represented Molecular Rebar affiliate Bio-Pact, an emerging leader in the targeted transport of biopharmaceuticals for blood and diseases, with respect to medical applications and licensing activities.
- Represented Memorial Sloane Kettering Cancer Center in matters regarding patent portfolio counseling, procurement, licensing counseling and infringement investigations.
- Representing the Trustees of Columbia University in the City of New York in multiple intellectual property-related licensing, litigation and procurement matters.
- Represented Betesh Group, a privately held, multi-million dollar consumer products company, in multiple intellectual property-related licensing, litigation and procurement matters.
Knobbe Martens Olson & Bear LLP remains one of the largest teams on the market, allowing the group to take on a high number of standalone licensing matters as well as high-profile licensing work in the context of corporate transactions. Licensing agreements in the context of financings and transactions, especially in the venture and growth capital space, remains at the heart of the practice. Patent settlement agreements are another area of strength. With offices on the East and West coasts of the US, the team is well placed to assist a varied client base that ranges from start-ups and growth companies to established international companies, mostly from the life sciences and technology sectors. To further strengthen the practice's technical offering, the firm has expanded into data privacy, robotics and artificial intelligence with its already deep bench of practitioners coming from a science or engineering background. Practice head Steven Nataupsky and key contact Salima Merani are based in Orange County, as are the eight practitioners who joined the partnership in January 2019: Jessica Achtsam; Charlene Azema; Vikas Bhargava; Morgan Coates; Scott Cromar; Jonathan Menkes; David Schmidt and Harnik Shukla. Lauren Hockett left for Amazon Web Services, Scott Raevsky became an administrative patent judge at the USPTO and Christopher DiLeo went in-house to Becton Dickinson. John Holcomb retired following his nomination to serve as a United States District Judge for the Central District of California.
Other key lawyers:
Salima Merani; Gerard von Hoffmann; Jason Gersting
‘Absolutely competent, passionate and brilliant from a technical and legal perspective.‘
‘They are top-notch, dedicated, committed, and strive to bring the best possible work product every single day. My company works with a decent number of law firms, and I have to say the Knobbe Martens relationship is at the top of my list for the level of quality, value, commitment, and overall client satisfaction. I know that I am getting value when working with this team and it is money well spent.’
‘Salima Merani is always fully on top of the cases.‘
‘Salima Merani’s level of engagement, client satisfaction, dedication, strategic advice, counsel, and mentorship is unmatched. One of the top 3 outside counsel’s I’ve ever had the pleasure of collaborating with. Furthermore, Salima treats and spends the client’s money as if it was her own money.‘
Tyra Biosciences, Inc.
Vensana Capital, LLC
Personal Genome Diagnostics Inc.
ICU Medical, Inc.
Agilent Technologies, Inc
United States Postal Service
Fisher & Paykel Healthcare Ltd.
- Acted as lead IP counsel for Cala in negotiating a successful patent license from Massachusetts General Hospital and in helping Cala obtain a $50m investment aimed at facilitating collaboration on a new nerve stimulation platform for chronic disease treatments in the form of wearable neuromodulation therapies.
- Acted as lead counsel on IP diligence in the Series D equity financing and transactional documents for Ablative Solutions, aimed at funding the completion of clinical trials in support of U.S. and European regulatory approval of the Peregrine System for minimally invasive treatment of hypertension.
- Acted as lead IP counsel for Nkarta on multiple licensing matters, including the licensing of foundational patent rights from the National University of Singapore and St. Jude Children’s Research Hospital, and a $114m investment intended to fund critical pre-clinical and clinical testing of Nkarta’s therapeutic pipeline.
- Acted as lead IP counsel for Cartiva in its $435m acquisition by a global medical device company.
- Acted as lead counsel on the $450m Millipede acquisition by Boston Scientific.
Latham & Watkins LLP specialises in highly complex licensing agreements in the life sciences sector, but also offers experience in technology-related matters. The team's track record reveals its strength in a broad range of life sciences matters, including biologics, medical devices, gene therapy, cosmeceuticals and agricultural products. The group's range covers cross-licensing agreements and joint development agreements as well as due diligence work in the context of high-profile corporate transactions, often involving multi-jurisdictional elements. Practice head Judith Hasko is based in the Silicon Valley office.
Pliant Therapeutics Inc.
Puma Biotechnology Inc.
Tizona Therapeutics, Inc.
- Represented Pliant Therapeutics in its collaboration and worldwide exclusive licensing deal with Novartis AG for preclinical PLN-1474 along with up to three more integrin targets.
- Represented Daiichi Sankyo Co. Ltd in a global development and commercialization agreement with AstraZeneca for Daiichi Sankyo’s lead antibody drug conjugate in development for multiple types of cancers including breast and gastric cancer, and additional development in non-small cell lung and colorectal cancer.
- Latham represented Puma Biotechnology in its exclusive license agreement with Pierre Fabre SA to develop and commercialize Nerlynx within Europe and parts of Africa.
- Latham advised Tizona Therapeutics, Inc., an immunotherapy company, in its licensing and strategic collaboration agreement with AbbVie to develop and commercialize CD39-targeted therapeutics, including TTX-030, a first-in-class antibody for the treatment of cancer.
- Latham represented Agenus, a clinical-stage immuno-oncology company, in its collaboration with Gilead Sciences to develop and commercialize up to five novel immuno-oncology therapies valued at up to $1.7bn.
Morgan, Lewis & Bockius LLP demonstrates particular strength in domestic and international technology transactions, especially outsourcing transactions, and is predominantly active for clients specializing in semiconductors, software, electronics, engineering and the life sciences. Another area of focus are business method and e-commerce patent licensing agreements, often requested by clients from the financial services sector, for example for payment processing, electronic trading, and authentication and security-related matters. The team of Philadelphia-based practice head Eric Kraeutler, already one of the biggest ones in the market, bolstered its bench with the arrival of Hosang Lee from McDermott Will & Emery LLP in the Washington DC office in January 2019 and the partner promotions of the San Francisco-based Christina MacDougall, a life sciences, healthcare and chemistry expert, and the Philadelphia-based Michael Ryan, who specialises in electrical and computer engineering. Rahul Kapoor in Silicon Valley, Peter Watt-Morse in Pittsburgh, Alan Leeds in Princeton, deputy practice head Louis Beardell in Philadelphia and Benjamin Pensak in San Francisco are the key contacts.
‘A team focused on technology transactions, excellent contract drafting skills, ability to understand the client’s business, provide practical business-oriented legal advice and think through the relevant issues to be covered in an agreement.‘
‘Service-oriented and able to identify and prioritize issues, so that we can focus on key issues. Rahul Kapoor is an excellent attorney who provides very practical legal advice, and ensures that associates are well-trained and able to meet the needs of clients.‘
National Comprehensive Cancer Network (NCCN)
Merck & Co.
Gilead Sciences Inc.
- Represented SanDisk with the drafting and negotiation of commercial and IP issues related to its SD flash memory card joint venture with Toshiba and Panasonic.
- Represented Xperi Corporation in IP and technology transaction matters.
- Assisted Samsung with various technology transaction and licensing matters.
- Assisted Machine Zone with RTB, licensing and technology transactions.
- Advised the National Comprehensive Cancer Network on multiple licensing agreements to embed proprietary content in healthcare technology products, including clinical, recordkeeping, database, utilization review and other products.