Deals of Distinction Awards 2018

LES Honors Deals That Showcase Innovation And Collaboration

By Gregory Glass and Carla Blackman

LES named five licensing deals as its 2018 Deals of Distinction at its 2018 Annual Meeting in Boston. Two of the deals had participants from India, including one involving a low-cost, temperature-tolerant vaccine and one involving mobile phone handsets.

IUGI Sector Deal

The Industry, University, Government Interface (IUGI) deal went to the Serum Institute of India and the National Institute of Allergy and Infectious Diseases, which is part of the U.S. National Institutes of Health (NIH).

"The idea behind this project is that disease and the ability to cure it doesn't really stop at any particular border," said Steve Ferguson, a senior advisor at NIH. "Particularly, the issue of rotavirus is an important issue in the United States and in other areas of the world, where it is life-threatening. We're very pleased through this international partnership to have a vaccine come forward."

Jagdish Zade, deputy director of the Serum Institute, said that the vaccine has reduced the price of rotavirus treatment from US$60 to US$1, and has made it available throughout the world. "The Serum Institute had the technology for this, and NIH provided the science for this project. Joining the science and technology [resulted in] this vaccine being prepared and [being made] commercially available," Zade said.

The vaccine has been approved by the World Health Organization and the government of India.

Consumer Products Sector Deal

The Consumer Products Sector award went to Ericsson and Micromax.

"After years of negotiation and litigation, these two parties entered into a standards essential patent license that provided access to Ericsson's cellular technology globally. This deal also demonstrates increased respect for IPR in India," said Lewis Stark, a New York-based partner for royalty audit and contract compliance at Prager Metis CPAs, who presented the award on behalf of the LES consumer products sector committee.

"We started negotiating with Micromax over a patent license in 2009, and started litigation with Micromax in 2013, so it's been a long time coming for this deal," said Patricio Delgado, vice president of FRAND compliance at Ericsson. "The reason it's special is because the impact of having India truly respect IPR and contribute back to the further development of cellular technology."

Delgado specifically praised the Delhi High Court for its role in the process. "There's been some commentary on India and whether it respects IPR, and I think the Delhi High Court really treated us fairly. Even though it took a while in the court system, we felt like it was an even-handed process," he said.

Micromax is one of India's largest handset vendors.

Life Sciences Deal

The winning deal in the Life Sciences sector was between Pieris Pharmaceuticals and AstraZeneca, who cooperated on the preclinical development of antibody mimics to treat respiratory diseases. This life-enhancing deal brings together a worldwide preclinical alliance for "Next Generation of Therapeutic Proteins" to treat respiratory diseases.

PRS-600 Inhaled Anticline IL-4 Alpha Receptor for Treatment of Asthma is a deal between Pieris Pharmaceuticals and AstraZeneca. Pieris has the option to co-develop PRS-060 and two additional compounds in the U.S. for CON% of the U.S. margin. AstraZeneca has rights to four additional Anticalin compounds.

There was a $57.5 million payment in up front and near term milestones.

In addition to the commercial significance of this deal (top 10 biotech licensing deal in 2017), the complexity of the alliance terms and license grants to accommodate for co-development activities make this a distinctive deal. 

CEEM Deal

In the Chemicals, Energy, Environment and Materials (CEEM) sector, LES recognized the partnership between Lightbridge and Framatome in the commercialization of nuclear fuel technology.

A U.S.-based Enfission joint venture with Lightbridge and Framatone was launched in January 2018. It brought together Lightbridge Corporation's years of advanced fuel R&D, and Framatome's nuclear fuel engineering and production services to develop the innovative fuel.

The partnership that developed the Lightbridge Fuel believes it will provide significant, near-term benefits: increased power output; longer fuel cycles and plant lifetimes; reduced proliferation risk; and improved accident response.

High Tech Deal

The High Technology Sector Deal recognized Blockstack's US$50 million Token pre-sale to more than 800 investors including, Union Square Venture, Winklevoss Capital, Lux Capital and F-Prime Capital Partners.

Founded in 2013, Blockstack has been building a decentralized blockchain architecture for publishing on the internet, one designed around user control. In late 2017, Blockstack raised $50 million through the sale of 440 million tokens. The sale attracted leading investors to fund Blockstack's particular vision for a decentralized web built on blockchain technology.

High Tech Sector Leader, Efrat Kasnik said, "The award was given to this deal because it represents both technological innovation (digital assets created on the Blockchain network) as well as innovation in funding."

In a deep dive workshop, Elizabeth Thys from Blockstack and Sachin Patodia of Devonshire Investors discussed the dynamics and outcome of this deal as a new funding vehicle in the blockchain ecosystem with moderator Efrat Kasnik.

Read LES Viewpoints December 2018 Edition here