Year's Best IP Business Deals Receive Licensing Executives Society Deals of Distinction™ Awards
Tuesday, August 13, 2013
Winning Deal Teams, Including Reps from Kodak, Intellectual Ventures, RPX, Celgene, Epizyme, Battelle, UniEnergy Tech, Riverside Specialty Chemical, will Share Insight, Lessons Learned at LES Annual Meeting
WASHINGTON, August 13, 2013— In one of the biggest intellectual property (IP) transactions of the year, Kodak licensed its digital imaging portfolio to a 12-company consortium, including Apple, Google, Facebook, Samsung Electronics and others, for $527 million making it one of three extraordinary IP transactions that will receive a Licensing Executives Society, (U.S.A. and Canada) Inc. 2013 Deals of Distinction™ Award during the Society's Annual Meeting, 'IP Matters in Every Deal,' September 22-25 in Philadelphia, PA.
This year awards will be presented to winners in the High Tech, Industry-University-Government-Interface and Life Sciences sectors and representatives from the winning deal teams will be on hand to discuss the evolution and dynamics of their transactions, as well as lessons learned. This includes an exclusive briefing with architects and participants of the Kodak deal: Robert Heath, Senior VP, RPX Corporation; Ken Lustig, VP, Intellectual Ventures; Timothy Lynch, Chief IP Officer, Kodak; and, Nader Mousavi, Partner, Sullivan Cromwell. See www.lesannual.org for complete Annual Meeting program details.
2013 Deals of Distinction Awards will be presented to:
High Technology Sector Winner
Kodak, Intellectual Ventures and RPX Corporation
Winners of the 2013 Deal of Distinction Award for the High Technology Sector are Kodak, Intellectual Ventures (an invention capital company) and RPX Corporation (a patent risk management firm), for a deal in which Kodak agreed to license its digital imaging portfolio to a consortium of 12 licensees, including Apple, Google, Facebook, Samsung Electronics and others, for $527 million. The deal was organized by Intellectual Ventures and RPX Corporation and its proceeds were used to pay down Kodak's bankruptcy debt.
The transaction involved a complex orchestration of direct licenses, grant back agreements and asset acquisitions amongst the 12 licensees, Intellectual Ventures and Kodak. Each of the 12 licensees paid a portion of the cost in exchange for license rights to the digital imaging patent portfolio and other Kodak patents as stipulated in the agreement. At the same time, Intellectual Ventures paid a portion to acquire a substantial majority of the digital imaging patent portfolio, subject to these new licenses, as well as previously existing licenses.
"This deal is certainly one of the largest technology patent deals of 2012," said Shawn Ambwani, High Tech Sector Deal of Distinction Chair. "It impressed the Sector not only because of its sheer size and the breadth of its coverage, but also because of its highly complex final structure given existing litigation, Kodak's creditors, and the number of participants involved in the final consortium."
Life Sciences Sector Winner
Celgene and Epizyme
Celgene and Epizyme are recognized this year with 2013 Deals of Distinction Awards from the Life Sciences Sector for their innovative strategic partnership in histone methyltransferase inhibitors (HMT), which aims to discover, develop, and commercialize innovative personalized therapeutics for patients with genetically defined cancers by targeting prioritized HMTs within the 96-member HMTome.
This strategic alliance between Celgene and Epizyme brings together the expertise of two scientifically based organizations that concentrate research and development in identifying the underlying causes of disease, and then treating those diseases at the source. This approach facilitates progressing programs with high therapeutic potential, like the HMT inhibitors, through the research and development process in an expedited manner, so that patients can benefit from these therapies as quickly as possible.
Investments in medical innovation create value in numerous ways, including reducing inefficiencies in the healthcare system, contributing to the overall growth of the economy, and most importantly, improving the quality and length of cancer patients' lives. In the last twenty years, medical innovation has reduced the number of cancer deaths by 30%, more rapidly than at any time before. Since 2000, innovative medicines have added more than 42 million life-years to cancer patients and generated $4.2 trillion in economic value. As a direct result of investment in medical innovation, total spending on health care for patients with cancer has remained constant for the last 20 years at less than 5% of total healthcare spending.
This new partnership between Celgene and Epizyme gives Celgene ex-US rights to DOT1L and an exclusive 3-year option (with an option to extend for one additional year) to take ex-US rights to other HMT programs. Celgene and Epizyme share equal funding of collaboration programs on a global basis that will begin after phase 1 for DOT1L and at IND for any other programs in the collaboration. The DOT1L program was in pre-clinical development at the time of the transaction and is currently in a phase 1 dose escalation study that includes the genetically defined patient population.
"We feel personalized medicine is an important area given an increasingly budget-constrained and payer sensitive environment," said Life Science Deal of Distinction Chair Jack Tupman. "This deal contains an interesting and relatively complex structure for early programs for a large number of potential HMT targets. It also creates a strong opportunity for Epizyme to create future value through retention of US rights, building off 2011 transactions with GSK and Eisai, and positioning the company to create a US based FIPCO."
Industry-University-Government Interface Sector Winner
Battelle, UniEnergy Technologies, LLC, Riverside Specialty Chemical and others
Winners of 2013 Deals of Distinction Awards for the Industry-University-Government Interface Sector (IUGI) are Battelle (operator of the U.S. Department of Energy's Pacific Northwest National Laboratory) and multiple counterparties for a deal involving the licensing of a novel electrolyte for use in an all-vanadium redox flow battery to be used in large, grid-scale energy storage applications. The counterparties include UniEnergy Technologies, LLC for a license to manufacture the battery devices, Riverside Specialty Chemical for a license to the electrolyte itself, and others that have chosen to remain anonymous or that are still pending.
Redox (reduction-oxidation) flow batteries are considered a promising large-scale energy storage device, offering several advantages over energy storage alternatives. But their inability to work at a wide range of temperatures, high cost, low system efficiency and low energy density have stood in the way of grid-scale deployment.
The Mixed-Acid Vanadium Redox Flow Battery, developed by researchers at Pacific Northwest National Laboratory (PNNL) with funding from the Energy Department's Office of Electricity Delivery & Energy Reliability, is the first commercially viable flow battery capable of deployment at grid-scale. This breakthrough battery uses a novel approach to the battery chemistry to overcome limitations of the current generation of redox flow batteries. The newly designed Mixed-Acid Vanadium Redox Flow Battery improves the performance and holds promise for storing large amounts of renewable energy and providing greater stability to the energy grid along with lowering the cost of batteries.
Given high interest in the technology from a number of companies, PNNL developed a Grid-Scale Energy Storage Commercialization Team to develop a commercialization strategy, which included both "device" licenses and "electrolyte" licenses to meet the existing demand.
"This deal is unique as multiple licenses were structured creatively to meet the unique business goals of each party involved," said IUGI Deals of Distinction Chair Suguna Rachakonda. "All of the licenses in the deal had standard license terms including an up-front licensing fee and a royalty based on sales revenues of products. Each license also includes very strict diligence terms, such as minimum royalty requirements and technical milestones to maintain the license."
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 2013 awards included distinctive deals in structure or objective, consummated in the 2012-2013 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 4,500 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.