Licensing Executives Society Announces 2009 Deals of Distinction Awards

Intellectual property (IP) development and the licensing of IP is an essential component of innovation in our knowledge-based economy. Each year, major IP deals between companies help drive innovation and ensure that new products continue to reach businesses and consumers.

To highlight the best of these deals, the Licensing Executives Society (USA & Canada), Inc. (LES) today presented its Deals of Distinction ^TM Awards to winners in five industry sectors. The awards were given at the LES Annual Meeting in San Francisco, California.

“Now more than ever, our economy needs intellectual property and the innovation in products and services that IP helps to achieve,” said Rimma Driscoll, chair of the LES Deals of Distinction Award Committee. “We are proud to recognize these winning deals, because they are making a real difference.”

The 2009 LES Deals of Distinction Awards Winners are:

Chemicals, Energy, Environment, and Materials (CEEM) Sector: HP and Xtreme Energetics

Drawing upon a rich history of innovation, HP collaborated with Oregon State University (OSU) to develop transparent transistor technology, also known as multi-component oxide (MCO) semiconductors. Xtreme Energetics, a solar energy system developer, entered into a technology collaboration and licensing agreement with HP to adapt this technology for use in a solar energy system designed to generate electricity at twice the efficiency and half the cost of traditional solar panels.

This deal demonstrates the versatility that transparent transistors hold to solve meaningful problems in applications ranging from flat-panel OLED and LCD displays to green energy solutions. Xtreme Energetics is now further developing the technology in its own labs and funding research at OSU.

“HP’s license and technology collaboration agreement with Xtreme Energetics exemplifies how a global technology company finds a way to speed up its deployment of advanced technology through a business and technology development partnership,” said Bob Payne of IP Licensing Advisors LLC, co-chair of the Deals of Distinction for the LES CEEM Sector.

Jeff Wendt of Pramudji Wendt & Tran, LLP, also co-chair of the Deals of Distinction for the LES CEEM Sector, added, “This deal was intriguing because it hit on all facets of our sector: chemical, energy, environment, and materials."

Consumer Products Sector: Allergan and the Clinique Laboratories, LLC

Allergan, Inc. and Clinique Laboratories, LLC partnered to produce a new line of high-end skin-care products to be sold exclusively through physicians in the United States. Clinique developed and manufactures the products and sells them to Allergan, which then markets and distributes them under the Clinique Medical brand. The products complement in-office aesthetic procedures, such as laser peels and microdermabrasion.

“We are delighted to recognize the innovative relationship between these two companies,” said Dan O’Neill, co-chair of the LES Consumer Products Sector. “Their relationship epitomizes the critical interplay between brand and technology; consumers will benefit from Allergan’s marketing and distribution of Clinique’s innovative Clinique Medical skin care products.”

High Technology Sector: SRC and Sandia National Labs

Sandia National Laboratories, which began an innovative approach called the National Institute for Nano-Engineering (NINE) to facilitate the education of students and improve U.S. competitiveness, partnered with Semiconductor Research Corporation (SRC) to supplement the flow of funding, information and intellectual property rights between industry, universities, and the national labs. A novel aspect of the partnership is the creation of a cooperative research and development agreement with a subsidiary nonprofit entity structured to allow broad industrial and university participation.

With a broad range of technical expertise in all the disciplines critical to advancing nanotechnologies, Sandia will identify potential projects for NINE that involve university collaborators and address pressing U.S. needs, and will then collaborate with universities and industry participants. SRC has 27 years of experience in arranging collaborative research for the semiconductor industry, defining industry needs and investing in and managing the research that gives its members a competitive advantage in the dynamic global marketplace.

“This deal represents a unique collaboration as part of the National Institute for Nano-Engineering (NINE) partnership between government and industry,” said Brian Kacedon, chair of the LES High Technology Sector. “The deal has the potential to result in real advances in the diverse field of nano-engineering, including nano-engineered chemical processes, nano-composites, and nano manufacturing. In addition, it is also providing a forum for the training of the next generation of nanotechnology researchers.”

Industry-University-Government Interface (IUGI) Sector: Hope Pharmaceuticals, Aires Pharmaceuticals and the U.S. National Institutes of Health

The award winner for this category is a group of licensing agreements for the development of sodium nitrite as a repurposed pharmaceutical agent potentially effective against a number of serious medical conditions. The National Institutes of Health (NIH), supported by four university collaborators, was able complete exclusive license agreements with Hope Pharmaceuticals (for infused delivery) and Aires Pharmaceuticals (for inhaled delivery) to develop new treatments for conditions not well-managed by existing therapies.

The license agreements were based upon the discovery by four NIH institutes (National Institute of Neurological Disorders and Stroke, National Heart Lung & Blood Institute, Clinical Center, and National Institute of Diabetes and Digestive and Kidney Diseases) and four universities (Loma Linda University, Louisiana State University, University of Alabama, and Wake Forest University) that low, physiological and non-toxic concentrations of sodium nitrite could be used in disease indications such as pulmonary hypertension, ischemia-reperfusion injury, hemolytic disease, hemoglobinopathies (including sickle cell disease) and cerebral vasospasm. Sodium nitrite is currently only available to patients by intravenous delivery for the treatment of cyanide poisoning.

"This deal showcases the positive results that can be obtained through the cooperation/collaboration of multiple institutions, and is also a significant accomplishment in the successful licensing of a generic compound,” said Elaine White, chair of the LES UIGI Sector.

Health Care Sector: Eli Lilly and United Therapeutics

In November, 2008, Eli Lilly and Company and United Therapeutics Corporation entered into a license and a supply agreement related to the U.S. commercialization rights for the pulmonary arterial hypertension (PAH) indication of Lilly’s molecule, tadalafil. United Therapeutics made an upfront payment of $150 million to Lilly for the exclusive rights to commercialize tadalafil for PAH in the United States, as well as for a product manufacturing and supply arrangement. Lilly purchased $150 million of United Therapeutics common stock. The transaction will greatly enhance the ability to provide this medicine as a new therapeutic option for patients of this very serious disease.

"This deal is a clear demonstration of the power of courage and creativity in licensing," said Mark Nawacki, chair of the LES Life Sciences Sector. "Historically, large pharma has been very cautious in partnering deals for new indications on major strategic brands such as tadalafil (marketed as Cialis by Lilly). This is an inspired transaction because the financial deal structure mitigates such concerns while the equity purchase component enables a solution in the worst capital market we have seen in a generation."