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Year’s Most Outstanding IP Business Deals Receive Prestigious Deals of Distinction™ Awards from LES

Sunday, September 07, 2014  
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Architects of winning deals will share exclusive details at LES Annual Meeting, Oct. 5-8 in San Francisco

WASHINGTON, September 9, 2014— Four of the year's most outstanding intellectual property licensing deals have received the Licensing Executives Society (U.S. A. and Canada), Inc., 2014 Deals of Distinction™ Awards, which will be presented at the Society's 50th Annual Meeting, October 5-8 in San Francisco. Click here for complete Annual Meeting program details.

The awards are presented annually to recognize the most outstanding IP business deals in four industry sectors, including High Technology; Industry-University-Government Interface; Life Sciences; and, Chemicals, Energy, Environment and Materials. Several representatives from winning deal teams will be on hand to present exclusive details about the evolution and dynamics of their winning transactions at the LES Annual Meeting. This year's winning deals are:

High Technology Sector Winner

Google Inc., and Lenovo Group Limited

Winners of the 2014 Deals of Distinction Award for the High Technology Sector are Google Inc., and Lenovo Group Limited for a deal in which Google, which purchased Motorola Mobility in 2011, sold Motorola Mobility to Lenovo for $2.91 billion. Under the terms of the agreement, Google retains ownership of the majority of patents, with approximately 2,000 patents and a license on the remaining patents going to Lenovo.

The transaction strengthens Google's relationship with Android licensees and provides them with the ability to focus on driving innovation across the Android platform and mobile software. For its part, Lenovo acquires key relationships with Motorola's carriers in mature markets, deep phone development experience, expertise in legal and patent issues related to mobile technology and continues to operate under favorable patent licenses with many patent holders.

"This deal provides insight into the continued importance of intellectual property as high technology companies continue to position themselves within specific markets, particularly in the ultra-competitive smartphone market," said Kevin Spivak, High Tech Sector Deals of Distinction Chair. "Our sector was impressed by the deal not only because of its complex nature and issues, but also because of the high public visibility within which the two companies operate."

Industry-University-Government Interface Sector Winner

U.S. Food and Drug Administration, National Institutes of Health,
PATH and the Serum Institute of India

The 2014 Deals of Distinction Award from the LES Industry-University-Government Interface Sector (IUGI) went to the U. S. Food and Drug Administration (FDA), National Institutes of Health (NIH), PATH, and the Serum Institute of India (SII) for MenAfriVac, a low-cost meningitis vaccine designed for use in sub-Saharan Africa. The pioneering vaccine, and the first one for developing countries that does not require constant refrigeration, is based upon a patent license from the NIH and FDA to PATH, and was subsequently sublicensed by PATH to SII under the Meningitis Vaccine Project, a partnership of PATH and the World Health Organization.

Meningococcal meningitis, a deadly bacterial infection of the brain, can be prevented with vaccination but the technology is complex and generally beyond the capacity of infrastructures in most developing countries. This patent license agreement involving scientists and technology transfer officers of FDA and NIH has made a critical contribution to developing and transferring the technology needed to manufacture a vaccine against the disease, and at an affordable cost for 26 African countries where group A meningitis is most common.

Under a novel partnership mechanism organized by PATH, NIH licensed a conjugate vaccine technology developed by Dr. Che-Hung Robert Lee and Dr. Carl Frasch of FDA's Center for Biologics Evaluation and Research to PATH. PATH worked with the Serum Institute of India, which agreed to scale up the technology and produce the vaccine at a cost that African countries could afford in exchange for technical know-how. The collaboration agreement has been described in SciDev.Net as an "intriguing model" of vaccine development for developing countries, in which a vaccine with specific characteristics tailored to a particular population is developed at a modest cost and provisions to ensure sustainable access are built in from the start.

This license agreement includes financial incentives to the licensee for achievement of certain distribution milestones. The true "return on investment" goal for the NIH and FDA is not financial, but rather maximizing the public health impact of the license agreement. Introduced at large scale in Burkina Faso in December 2010, the vaccine has now reached more than 150 million people in 12 African countries, with no case of group A meningitis reported so far in vaccinated populations.

"This deal stood out because it shows the true collaboration and teamwork of all parties involved," said IUGI Deals of Distinction Chair Thierry Musy-Verdel. "It also demonstrates that it is possible for research organizations such as federal laboratories and universities to license their technologies to organizations other than traditional pharmaceutical and biotech companies and to successfully achieve product commercialization and thus public utilization of their research."

Life Sciences Sector Winner

Gilead Sciences, Inc., and MacroGenics, Inc.

Gilead Sciences and MacroGenics have received the LES Life Sciences Sector 2014 Deals of Distinction Award for their strategic alliance entered in January 2013 to develop and commercialize bi-specific antibodies originally directed at up to four undisclosed targets. This is one of the more recent in a string of collaborations around MacroGenics' DART technology, a proprietary platform that engineers antibodies to target multiple antigens. Such platform technologies are generating interest as companies look to increase the efficacy and efficiency of their therapies by targeting multiple targets simultaneously. Under the original terms of the January 2013 agreement between Gilead and MacroGenics, Gilead was granted the option to gain exclusive worldwide rights to develop and commercialize each of three preclinical DART programs, while MacroGenics retained development and commercialization rights outside of North America, Europe, Australia and New Zealand for a fourth program. Gilead is responsible for funding research activities for all of the licensed programs under the collaboration. The transaction provided potential payments of up to $1 billion, based on successfully achieving preclinical, clinical, regulatory and commercial milestones in all four programs. MacroGenics is also eligible to receive royalties on future net sales. "This award recognizes the commitment of Gilead to gain access to additional innovative technologies to find new therapeutic modalities for cancer patients and those suffering from other life threatening diseases," said Sector Chair Leslie Stolz. "We congratulate both companies and look forward to the progress they will make working together to build their technologies and their portfolio of patient solutions."

Chemicals, Energy, Environment and Materials Sector Winner

Canada's Oil Sands Innovation Alliance (COSIA)

The winner of the 2014 Deals of Distinction Award for the Chemicals, Energy, Environment and Materials (CEEM) Sector is Canada's Oil Sands Innovation Alliance (COSIA) for a deal in which COSIA and 12 of its 13 member companies in the Canadian oil sands industry entered into a joint venture that established the Green House Gas (GHG) Environmental Priority Area (EPA) Joint Venture Agreement (JVA). The GHG EPA JVA is part of the overall COSIA effort to accelerate the pace of improvement in environmental performance in Canada's oil sands through collaborative action and innovation in GHG avoidance and reduction technologies. The GHG EPA is focused on the avoidance and reduction of GHG emissions in the oil sands operations, whether that be through energy efficiency improvements or new technology developments.

The GHG JVA structure is unique in that it allows collaboration between the major oil sands operators on improvements in environmental performance by focusing on technology innovation in areas of common interest and reduces barriers to technology implementation by sharing of intellectual property rights. Each member of the GHG EPA contributed a number of technologies that fell within the scope of the GHG EPA JVA and each granted various rights to these technologies to the GHG JVA members. Contributions from members included contributed technology (data, technical reports, field test data, etc.) relevant to the GHG EPA, an immunity from suit to the background intellectual property (IP) related to their contributed technologies or their sponsored Joint Interest Projects (JIP's), and financial contribution to help fund ongoing JIP's. Current JIP's in the GHG EPA are "The Algae Project," "Gas-Turbine Once-Through Steam Generator," "GHG Roadmap," "Vacuum Insulated Tubing," and "Waste Heat Recovery." Participation in JIP's sponsored by the GHG EPA is open to all industry participants. Participants are required to provide the GHG EPA members and other JIP participants an immunity from suit to their background IP in the specific JIP scope and field of use. The breadth of the JIP-generated intellectual property rights granted to each JIP participant depends on the status of that participant. For example, funding COSIA members who are also GHG EPA members and who participate in the JIP receive the broadest, least restrictive IP rights whereas a non-COSIA industry participant providing funds for the specific JIP is entitled to the most restrictive rights to the developed IP.

"This deal is unique in that it allows a GHG EPA member to protect non-contributed IP by participating only in those JIP's where the required grant of immunity for JIP participation would not undermine the participant's on-going research or a competitive IP position," said CEEM Deals of Distinction Chair Tim Kinn. "This aspect allows greater membership in the GHG EPA JVA, participation in sponsored JIP's and impact on the industry." The members of COSIA are BP Canada Energy Group ULC, Canadian Natural Resources Limited, Cenovus Energy Inc., ConocoPhillips Canada Resources Corp., Devon Energy Corporation (Devon Canada), Imperial Oil Resources Limited, Nexen Inc., Shell Canada Energy, Statoil Canada Ltd., Suncor Energy Inc., Syncrude Canada Ltd., Teck Resources Limited, and Total E&P Canada Ltd.

About the LES Deals of Distinction™ Awards Program
Started in 2005, the LES Deals of Distinction Awards Program recognizes worthy transactions involving licensing and transfer of intellectual property and promotes creative and innovative solutions to business and licensing issues involving contracts. Nominations with the support of a LES member are considered and, with input from that industry, recommended by the LES Deals of Distinction Awards Committee and ratified by the LES Executive Committee. The criteria for the 2014 awards included distinctive deals in structure or objective, consummated in the 2013-2014 time period with at least one party having a presence in the U.S.A. and Canada. The physical award is hand-sculpted glass by the artisans of Parris-Roché Design Studios, consisting of a pair of entwined blue glass ribbons encased in a clear conic pinnacle, symbolic of parties coming together and obtaining superior results through collaboration.

Click here to learn more about the Deals of Distinction Awards.

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About the Licensing Executives Society (U.S.A. and Canada), Inc.

Established in 1965, the Licensing Executives Society (U.S.A. and Canada), Inc. (LES) is a professional society comprised of over 4,000 members engaged in the transfer, use, development and marketing of intellectual property. The LES membership includes a wide range of professionals, including business executives, lawyers, licensing consultants, engineers, academicians, scientists and government officials. Many large corporations, professional firms, and universities comprise the Society's membership.

Licensing Executives Society (U.S.A. & Canada), Inc. is a member society of the Licensing Executives Society International, Inc. (LESI), with a worldwide membership of more than 10,000 members in 32 national societies, representing over 90 countries. For more information on LES, see www.lesusacanada.org.