Intellectual Property Transactions

Ropes & Gray’s Royalty Monetization team regularly works with sellers and buyers of royalty streams on the sale and financing of royalty interests.  Our attorneys are adept at navigating the increasingly complex structure and terms in royalty sale transactions. We represent a range of sellers of royalty interests, including biotechnology companies, academic medical centers and universities. Our experience includes structuring complex synthetic royalty arrangements, sales of partial royalty streams and sales of full royalty interests. Comprised of attorneys from practice areas across the firm, we have the collective expertise to ensure that any IP, regulatory, licensing or other issue that may arise is identified early to ensure a successful process for our clients.

Representative experience: royalty monetization (Buy-side)

• Represented Canadian Pension Plan Investment Board in the acquisition of a portion of LifeArc’s royalty interests on worldwide sales of Keytruda® (pembrolizumab) for approximately $1.3 billion
• Represented Blackstone in a $2 billion strategic transaction, including the purchase of 50 percent of the royalties owed to Alnylam on global sales of inclisiran, an investigational RNAi therapeutic for the treatment of hypercholesterolemia
• Represented Sixth Street Partners in its $175 million synthetic royalty financing of Clovis Oncology to fund a clinical trial for an additional indication of Rubraca
• Represented Royalty Pharma in its purchase of a royalty interest from Zealand Pharma for $205 million
• Represented a leading biotechnology company on its $3.25 billion acquisition of Elan’s royalty interest and other rights in TYSABRI, a multiple sclerosis treatment

Representative experience: royalty monetization (SELL-SIDE)

• Represented Ironwood Pharmaceuticals in a $175 million royalty based debt offering, in which the debt will be repaid through a synthetic royalty on sales of LINZESS in the United States
• Represented Children’s Hospital of Philadelphia Foundation in the sale of its royalty interest in RotaTeq to Royalty Pharma for $182 million
• Represented New York University in the sale of its royalty interest in Remicade to Royalty Pharma for $650 million
• Represented Aeterna Zentaris in connection with its agreement to sell its royalty interest in Cetrotide to Cowen Healthcare Royalty Partners for $50 million
• Represented Oscient Pharmaceuticals in $70 million synthetic royalty-based financing from Paul Capital

We regularly work within the field of IP finance to support creditors, borrowers, and other monetizing IP income and asset values. For example, we work with sellers and buyers of royalty streams on the sale and financing of royalty interests, and our attorneys are adept at navigating the increasingly complex structure and terms in royalty sale transactions. We represent a range of sellers of royalty interests, including academic medical centers, universities and biotechnology companies. Our experience includes structuring complex synthetic royalty arrangements, sales of partial royalty streams and sales of full royalty interests. 

We also have deep expertise in advising clients on corporate structures created to acquire, hold, license and enforce both intellectual property and related tangible assets in order to maximize their value for our clients in their lending, borrowing, securitization and monetizing activities. Our team has a deep bench of experience expertise and regularly designs and implements monetization strategizes that will optimize the use and value of clients’ assets.

Representative matters include: 

• Advised Dunkin’ Brands Group, Inc. (“Dunkin’ Brands”) on the refinancing of its senior secured credit facility with a new $2.6 billion securitized debt facility. Dunkin’ Brands is the parent company of Dunkin’ Donuts and Baskin-Robbins.
• Represented Canada Pension Plan Investment Board in its purchase of a royalty interest on sales of products based on Dana Farber’s Programmed Death Ligand-1 (PD-L1) intellectual property. Canada Pension Plan Investment Board has paid $100 million upfront to acquire a portion of Dana-Farber’s royalty interests and has committed to pay up to $68 million in additional payments, subject to certain conditions
• Represented LA BioMed and UCLA in a royalty monetization involving the sale of a royalty stream payable to LA BioMed under a license to Allergan for certain patents covering the submental fat product “Kybella.” Ropes & Gray worked closely with LA BioMed and UCLA , as well as their structuring agent, Morgan Stanley, throughout a two-round bid process. The transaction reached a successful conclusion with Canada Pension Plan Investment Board as the winning bidder.
• Represented Ironwood Pharmaceuticals in a $175 million royalty-based debt offering, in which the debt will be repaid through a synthetic royalty on sales of LINZESS in the United States.
• Represented HealthCare Royalty Partners in an investment in Nuron Biotech, Inc., a specialty biologics and vaccines company, including an $80 million financing, a $30 million equity investment and a $50 million synthetic royalty loan based on future sales of Meningitec, a vaccine, and the company’s other products. 

Clients with extensive IP portfolios work with Ropes & Gray to determine the value of their IP assets and to develop new commercial opportunities for those assets.

Drawing upon our extensive patent, trademark, corporate, litigation and regulatory resources, we provide strategic guidance to companies in a wide variety of manufacturing, biomedical, technology and service industries. We offer companies seeking new commercial arrangements for their existing intellectual property advice about strategic deployment and management of IP assets in markets around the world.

Our advice includes: 

• Examination of existing IP assets to identify those with the highest values 
• Setting priorities for those IP assets with the greatest potential for commercial applications

IP monetization helps companies leverage their existing IP assets to help finance development of new technologies and intellectual property. Our attorneys advise companies on maximizing revenue from their existing patents, trademarks and other intellectual property through alliances, development, and marketing collaborations in which IP assets are material to the transaction. We help clients monetize their IP assets by selling or licensing those assets, helping to ensure that our clients generate more revenue and reduce costs.

We help our clients with: 

• Arranging for advantageous sales of patented technologies 
• Negotiation and drafting of trademark and copyright licenses 
• Establishing brand and media licensing programs 
• Creation of software or data licensing initiatives for multiple distribution channels

We work with companies engaged in a wide range of industries, from basic manufacturing to high technology. Many of our IP attorneys and technical advisors hold advanced engineering and science degrees and have extensive business experience, allowing us to offer comprehensive commercial guidance in every industry including:

• Electronics 
• Consumer branded products 
• Media and publishing 
• Semiconductors 
• Telecommunications 
• Engineering 
• Biotechnology 
• Computer systems 
• E-commerce 
• Pharmaceutical 
• Medical devices

Our patent practice has professionals on three continents, including several that are qualified in more than one jurisdiction, making us uniquely positioned to help clients develop clear, actionable patent strategies across a broad range of technologies and regions.  Our attorneys and technical advisors have excellent technical backgrounds, with many holding advanced degrees in organic chemistry, cell biology, genetics, electrical engineering and computer science, neuroscience, and materials science.  We work closely with our clients to understand their technology and business, as well as the relevant third-party patent landscape.  Our strategic patent counseling is informed by the decades of experience our attorneys and technical advisors have in preparing and prosecuting patent applications, diligencing patent portfolios and designing remediation and risk mitigation strategies, and assessing risks associated with third-party patent portfolios.

Due Diligence

Our IP due diligence practice draws on our experience handling a wide range of patent and transactional matters for our clients, and includes:

• Performing due diligence evaluations of patent portfolios and related IP assets in the context of collaborations, licensing agreements, financings and mergers & acquisitions.
• Advising some of the largest pharmaceutical and medical device companies in the world on freedom-to-operate issues and strategic patent portfolio development for their commercial products, in the United States, Europe and Asia.
• Handling due diligence for many transactions on both the investor and target sides, including pre-IPO investments by venture capital groups, underwritten offerings of securities, pre-acquisition strategic investments by operating medical device companies and pharma-biotech collaborations.

Our diverse experience in patent and transactional matters uniquely positions us to assess strengths and weaknesses of target company’s IP positions, and translate those analyses into risk management strategies that benefit our clients' business interests. It also allows us to know which IP issues really matter in a deal, helping us to better focus client resources and energies.

Our patent attorneys also team with our FDA regulatory attorneys to advise on patent life cycle management, orange book listing and delisting matters , and issues relating to the follow-on biologics legislation.

Opinions

We consider the full range of our IP clients’ needs and regularly provide opinions on matters, including:

• Analysis of patentability
• Freedom-to-operate studies, and non-infringement and validity opinions
• Pre-litigation assessments
• Orange book listing and delisting assessments  
• Structuring business and tax aspects of transactions to maximize savings

Litigation support 

Our attorneys are skilled at communicating complex ideas to judges, juries and government agencies. Our sophisticated team of patent attorneys works closely with our trial attorneys to develop litigation strategies by:

• Assessing infringement or noninfringement positions
• Assessing validity and enforceability positions
• Reviewing complex file histories and lab notebooks
• Assessing issues such as conception and inventorship
• Developing effective cross-border litigation strategy

Contested Proceedings

When disputes arise, Ropes & Gray attorneys seek to resolve issues efficiently and economically. If litigation becomes necessary, we tap our experience in all aspects of patent office trial proceedings, and work with our clients to devise the best overall strategy. Our attorneys handle a variety of contested proceedings, including:

• Inter partes and ex parte re-examination proceedings
• European oppositions,evocation proceedings
• Reissue applications, including broadening reissues
• Third party observations and comments on pending patent applications of competitors

Europe

In today’s globally competitive world, companies need to protect their ideas and innovations internationally. Over the last few years, Europe has grown in importance for granting and adjudicating patent rights. Our European Patent team coordinates protection and enforcement strategies in the U.S. and Europe. To this end, they conduct freedom to operate and patent clearance studies for both the U.S. and European markets. Ropes & Gray has a team of dual-qualified U.S. lawyers and U.K. solicitors with a deep knowledge of U.S. and European patent law. Our attorneys help clients coordinate IP strategies in the United States and Europe, and coordinate cross-border patent disputes. Our team includes British solicitors with extensive experience handling highly contested EPO oppositions.

Our services include EPO oppositions; planning for the proposed Unified Patent Court and the proposed Unitary Patent; portfolio reviews; training for in-house counsel and management on the UPC; conducting European FTO assessments; licensing and drafting considerations; offensive strategies, such as choosing a forum for maximum global impact and launching effective pre-emptive strikes; and assistance with European filing strategy.

Leading businesses and investors in the global economy turn to Ropes & Gray’s team of international, IP and technology attorneys to protect, commercialize and maximize the value of their technology and IP assets. We have extensive experience helping clients with valuable innovations enter into strategic arrangements with third parties and develop new commercial opportunities for those assets, or extract value from those assets in other ways. On the ground across three different continents, our IP transactions professionals provide clients with around-the-clock, top-tier IP support on an international stage.

We help a range of clients from mature U.S.-, Europe-, and Asia-based multinational corporations with significant offshore engineering, manufacturing, marketing, sales, and service organizations, to start-up companies based in the United States and elsewhere seeking new markets for their products and services. We routinely work in the United States, European Union, India, Japan, China, Korea, Latin America and Israel.

We assist clients with:

• Formation and operation of joint ventures and other structures that support third-party business partnerships dealing with innovation assets
• Negotiation and drafting of strategic licenses and collaborations
• IP-backed debt financing and securitization
• Structuring IP assets and licenses to support merger, acquisitions and reorganizations
• Advantageous sale of selected IP assets
• Tax optimization of licensing structures
• Assessing IP portfolios to determine value of licensing and strategic partnerships
• IP-driven corporate structuring and restructuring across borders, including remote IP holding company spinouts
• Advice about the distribution and licensing of products in accordance with the legal and regulatory requirements of various countries
• Protection of IP and technology assets
• Managing international technology transfers and cross-border transactions
• Formulation of optimal core supply chain and distribution channel provisions

Drawing upon our intellectual property, corporate, litigation and regulatory resources, we provide strategic guidance to companies in a wide variety of manufacturing, life sciences, technology and service industries. We offer companies seeking new commercial arrangements for their existing intellectual property advice about business partnerships that extract the maximum value of innovation assets in markets around the world.

Our attorneys understand the complex business and financing needs of multinational technology businesses. Working with companies at every stage of development, we provide guidance regarding financial structuring, collaboration and other issues. Our advice includes:

• Advised Dunkin’ Brands Group, Inc. on its successful refinancing of its senior secured credit facility with a new $2.4 billion securitized financing facility based substantially on securitization of intellectual property and related revenue from IP-based licensing and franchise arrangements. 
• Represented Marquee Brands LLC in its acquisition of British men’s clothing brand Ben Sherman® and its related intellectual property assets from Oxford Industries, Inc. Sponsored by Neuberger Berman Private Equity, Marquee Brands is a brand acquisition, licensing and development company.
• Represented Genzyme, a Sanofi company, in the negotiation of a strategic collaboration agreement with Voyager Therapeutics to discover, develop and commercialize novel gene therapies for severe central nervous system disorders, under which Genzyme made $100 million of upfront commitments to Voyager (including $65 million in cash, a $30 million equity investment and additional in-kind contributions) and potential development and sales milestone payments totaled $745 million. 
• Advised Stanford University’s Office of Technology Licensing on intellectual property and licensing issues. Recent work involved revamping their standard forms to handle more complicated licensing arrangements that include a bundle of technology and intellectual property rights, and not just rights under patents, and providing strategic advice on negotiating the myriad issues such arrangements present.
• Represented the National Football League (NFL) in a series of transactions as part of a repositioning of NFL On Location (NFL OL), its premium events and hospitality business. The NFL partnered with Bruin Sports Capital and RedBird Capital Partners, who invested in growth capital and assume operational control of the business. 
• Advised Sarepta Therapeutics on its exclusive license and collaboration agreement with Summit Therapeutics plc granting Sarepta rights in Europe, as well as in Turkey and the Commonwealth of Independent States.
• Handled a complex patent licensing deal between Rovi Corporation (now TiVo Corporation) and Intellectual Ventures (“IV”), which resulted in two of the world’s leading media and entertainment patent portfolios being brought together under a unified, comprehensive licensing program for providers of over-the-top (OTT) digital media services. We assisted Rovi in drafting and negotiating complex licensing provisions, from payment calculations to maintenance and enforcement of patent rights. 
• Represented Pfizer in its global collaboration agreement with Merck KGaA to develop and commercialize anti-PD-L1 antibodies to treat tumors. This transaction won the LES 2015 “Deal of Distinction Award” for the life sciences sector. It included an upfront payment to Merck of $850 million and $2 billion in regulatory and commercial milestones.
• Represented a global information technology company on intellectual property issues related to the international separation of the company into the enterprise software services business and the printing and personal systems business. The team provided strategic advice on the allocation and licensing of trade secrets, copyrights and trademarks, counseled on the creation and structure of a trademark holding company for brands important to both businesses, and advised on template trademark licenses for both businesses post-split.
• Ropes & Gray represented Progenity, a provider of complex molecular and specialized diagnostic testing services, in a series of technology transactions. 
• Advised Juno Therapeutics, Inc., a Seattle-based, clinical-stage biotechnology company, in the drafting and negotiating of supply chain agreements.

We help our clients navigate the myriad licenses and other complex commercial agreements they encounter. In each transaction, we carefully consider our client’s strategic and operational goals, identify and address client and industry-specific risks, and constantly bear in mind the transaction’s strategic importance for the client’s business, operations and assets. Our extensive experience with technology-focused commercial agreements across a broad spectrum of industries allows us to advise on details such as market terms and anticipated negotiating leverage.

Our practice involves advising clients on their most complex licensing endeavors, including data licensing within highly regulated industries, structuring transactions in fields dominated by standards-setting organizations, and commercial agreements within global supply chains. Our experience covers a vast array of commercial relationships, including: 

• co-promotion
• marketing and distribution agreements
• outsourcing agreements
• manufacturing and supply agreements
• hosting and colocation agreements
• joint ventures
• collaborations
• software, technology and other intellectual property licensing.

Ropes & Gray has one of the largest and leading licensing and commercial practices in the world. Our team has wide-ranging experience in transactions involving both early and late development stage products, approved products, platform technologies and services across a number of industries. Recent transactions include:

• Advised Pfizer Inc. on its agreement with AstraZeneca to acquire the development an commercialization rights to AstraZeneca’s late-stage small molecule anti-infectives business, primarily outside of the United States. Represented Akebia Therapeutics in an exclusive licensing agreement with Janssen Pharmaceutical, NV, one of the Janssen Pharmaceutical Companies of Johnson & Johnson, under which Akebia in-licensed a portfolio of well-characterized HIF pathway compounds with potential applications across multiple therapeutic areas.
• Represented Canada Pension Plan Investment Board in its purchase of a portion of Dana-Farber Cancer Institute’s royalties defined by certain licensing arrangements related to Dana Farber’s Programmed Death Ligand-1 (PD-L1) intellectual property.
• Handled a complex patent licensing deal between Rovi Corporation (now TiVo Corporation) and Intellectual Ventures (“IV”), which resulted in two of the world’s leading media and entertainment patent portfolios being brought together under a unified, comprehensive licensing program for providers of over-the-top (OTT) digital media services.  We assisted Rovi in drafting and negotiating complex licensing provisions, from payment calculations to maintenance and enforcement of patent rights.
• Advised Stanford University’s Office of Technology Licensing regarding intellectual property and licensing issues.
  
   

In today’s global environment, businesses often need to collaborate to successfully grow their product and service offerings and expand across industries and geographies.

We have years of experience negotiating, structuring and administering collaborative business structures, including joint ventures, research and marketing collaborations, and strategic alliances.

We focus on our clients’ operational goals and the legal, financial, tax and governance issues that are critical to the successful operation of these ventures. By drawing on the resources of our offices in Asia, Europe and North America, we deliver unparalleled results for our multinational clients.

We have experience with joint ventures, collaborations and alliances spanning a wide range of industries, including:

• Life Sciences: Pharmaceuticals, Biotechnology, Medical Devices and Digital Health
• Technology: Software and Devices
• Private Equity
• Financial Services, Fintech, Hedge Funds, Investment Management 
• Consumer-Branded Products
• Digital Media and e-Commerce
• Health Care
• Gaming
• Universities and Colleges

Experience

• Represented Boehringer Ingelheim (BI) in reaching a global agreement with AbbVie to jointly develop and commercialize a biologic antibody for the treatment of psoriasis. We advised BI in connection with drafting and negotiating the global agreement and ancillary agreements, including a licensing, collaboration and transfer agreement and a clinical trial services agreement.
• Advised CMC Capital Partners, a leading sports, media and entertainment-focused private equity firm in China, in its partnership with Creative Artists Agency (CAA), the premier U.S.-based global entertainment and sports agency. The partnership resulted in the formation of CAA China.
• Assisted Tudor Investment Corporation with issues arising from technology development, management of proprietary computer-based trading systems and joint ventures in technology-based system. We assisted Tudor Investment Corporation by leading transactions involving the acquisition or disposition of proprietary technology assets for use in quantitative trading including joint ventures, structured licensing agreements, asset acquisitions and structured fund investments.
• Served as lead outside counsel to Pfizer, Inc. in connection with its ground-breaking PD-1 oncology collaboration with Merck KGaA. Pfizer’s collaboration with Merck KGaA focuses on the development and marketing of anti-PD-L1 antibodies designed to treat various tumor types. The transaction was honored with the “2015 Deal of Distinction” Award in the life sciences category by the Licensing Executives Society (U.S.A. and Canada).
• Represented New Mountain Capital, LLC in its partnership with Topix Pharmaceuticals, Inc., a provider of innovative therapeutic and cosmetic skin care products. New Mountain will provide Topix with significant financial and strategic resources to support future growth initiatives, which include new product development and acquisitions.
• Represented Akebia Therapeutics, Inc. in its $1 billion collaboration and license agreement with Otsuka Pharmaceutical Co. to develop and commercialize vadadustat in the United States.
• Advised JHL Biotech Inc. on a landmark strategic alliance with global healthcare leader Sanofi, which involves the development and commercialization of biosimilar therapies in China using JHL’s development and manufacturing facilities in Taiwan and China, and Sanofi’s commercial sales platform in China.
• Advised Eli Lilly in its digital healthcare collaboration with leading China internet company Tencent and online healthcare professional community DXY to develop and launch an integrated diabetes patient care program in China.
• Represented Sarepta Therapeutics in its gene therapy research collaboration agreement with Genethon, a non-profit R&D organization dedicated to the development of biotherapies for orphan genetic diseases, to jointly develop treatments for Duchenne muscular dystrophy (DMD).
• Represented Selecta Biosciences in its $30 million licensing agreement and collaboration with Spark Therapeutics, with eligibility for up to $430 million in milestone payments for each target and tiered royalties on commercialized gene therapy sales.
• Represented Shire Pharmaceuticals in its agreement with Sangamo BioSciences, a leader in therapeutic genome editing, to revise their January 2012 collaboration and license agreement to expedite the development of ZFP Therapeutics for hemophilia A and B and Huntington’s disease
• Advised Beijing-based CANbridge Life Sciences in licensing worldwide rights outside North America to a clinical-stage oncology inhibitory antibody drug candidate from Aveo Oncology Inc., of Cambridge, Mass.
• Represented Genzyme, a Sanofi company, in the negotiation of a strategic collaboration agreement with Voyager Therapeutics to discover, develop and commercialize novel gene therapies for severe central nervous system disorders, under which Genzyme made $100 million of upfront commitments to Voyager (including $65 million in cash, a $30 million equity investment and additional in-kind contributions) and potential development and sales milestone payments totaled $745 million.
• Advised Sarepta Therapeutics on its exclusive license and collaboration agreement with Summit Therapeutics plc granting Sarepta rights in Europe, as well as in Turkey and the Commonwealth of Independent States.

The world’s leading and most innovative companies look to Ropes & Gray for cogent advice about structuring IP and technology for corporate mergers & acquisitions, as well as other asset transfers and corporate restructuring. Experienced in all aspects of corporate law as well as IP issues, we provide our clients with advice that is backed by our firsthand knowledge of various technologies and industry practices. Representing both buyers and sellers in the acquisition and transfer of assets, our team assesses all of the risk associated with a transaction, synthesizing all pertinent information so that we can help our clients achieve the most advantageous results.

Whether we are managing the due diligence portion of a transaction or leading and completing all phases of an acquisition, reorganization or spinout, we protect a company’s IP assets and financial position.

Our IP transactions attorneys lead significant transactions where IP and technology are critical deal drivers, and lead and manage the IP portions of other mergers & acquisitions where IP and technology are an important component of a larger picture. Our recent work includes:

• Advising Rovi Corporation (now TiVo Corporation) on questions related to the intellectual property structure for Rovi’s acquisition of TiVo, Inc., which represented the integration of two media entertainment companies with unique and advanced patented technologies.
• Advising TPG in its $4.2 billion spinout of McAfee from Intel Corporation. TPG and Intel formed a joint venture in which TPG owns the majority stake of newly independent McAfee, LLC. This deal marked an extension by TPG into the cyber-security realm and created one of the world’s largest pure-play security firms.
• Representing Performance Health, a leading manufacturer and supplier of consumer-branded health, wellness and self-care products, in its proposed acquisition by Patterson Medical, a leading distributor of rehabilitation, sports medicine and assistive patient products.
• Representing InFront Sports & Media AG in its purchase of Omnigon Communications LLC, a New York-based multinational provider of digital solutions to leaders in the sports, media and entertainment industries.  
• Advising Marquee Brands in its acquisition of Body Glove, the Redondo Beach, Calif.-based outdoor sports and surf brand. Marquee acquired the Body Glove® brand as well as related intellectual property assets in the transaction.
• Assisted Tudor Investment Corporation by leading transactions involving the acquisition or disposition of proprietary technology assets for use in quantitative trading including joint ventures, structured licensing agreements, asset acquisitions and structured fund investments.