Purdue Research Foundation receives US $100 Million in Pharma Deal

The Purdue (University) Research Foundation has received US $100 million in a royalty monetization deal.  The Press Release from the Research Foundation states:

WEST LAFAYETTE, Ind. and NEW YORK, April 26, 2023 (GLOBE NEWSWIRE) -- Purdue Research Foundation, a private not-for-profit institute to advance the research of Purdue University, has received more than $100 million from Owl Rock, a division of Blue Owl Capital, for a portion of its royalty interest in Pluvicto (Lutetium 177Lu vipivotide tetraxetan). Purdue Research Foundation secured rights to royalties from Pluvicto as a result of Purdue’s license agreement with Endocyte Corp., which was acquired by Novartis in 2018.

This transaction helps Purdue Research Foundation advance its mission of investing in Purdue University’s innovative technologies and supports the university’s advancement.

Pluvicto is a radioligand therapy indicated to treat patients with metastatic castration-resistant prostate cancer who have failed multiple prior therapies. The therapy is also in development to treat prostate cancer in earlier lines of therapy.

"We feel privileged that the agreement with Blue Owl further strengthens Purdue's ability to support Purdue researchers and alumni through enhanced commercialization programs and funding opportunities,” said Brooke Beier, Senior Vice President of Purdue Innovates. “Purdue University researchers discover and develop innovations improving the world, one of the key aspects of a land-grant university. Pluvicto is one example of successful intellectual property protection, licensing and, ultimately, commercialization that we hope will unlock the potential for many more Purdue technologies to make an impact."

Sandip Agarwala, Managing Director and Global Head of Life Sciences, Blue Owl, said: “We are excited to partner with Purdue Research Foundation to assist it in fulfilling its mission of advancing technologies developed at Purdue University. Royalty transactions are a key component of Blue Owl’s broad and flexible investment strategy in the life sciences, and we see Pluvicto as a paradigm-shifting therapy for the treatment of patients with metastatic castration-resistant prostate cancer with blockbuster potential. We are encouraged to see the FDA expeditiously approving Novartis’ Milburn facility to help get this much-needed therapy to more patients.”

SVB Securities acted as PRF’s exclusive financial advisor, Foley Hoag LLP served as special counsel to PRF, and Ricardo Moran of Schwegman Lundberg & Woessner, P.A., served as IP counsel to PRF for the royalty monetization. Ice Miller LLP and Cooley LLP acted as legal advisors to Blue Owl.

Purdue University President Mung Chiang said the royalty interest agreement with Blue Owl Capital strengthens the university’s global reputation in several ways.

“First, the income will add funds for leading-edge research and development of life-saving pharmaceuticals in units such as Department of Chemistry and Purdue Institute for Cancer Research,” he said. “Second, the agreement underscores the impact of the work of legendary Purdue innovator Philip Low, Purdue University’s Presidential Scholar for Drug Discovery and the Ralph C. Corley Distinguished Professor of Chemistry. The initial research into the precision targeted therapy began in his laboratory. And this latest success of Purdue invention demonstrates the promises of Purdue Innovates, the initiative that Purdue and PRF launched this month to further support Boilermaker inventors and entrepreneurs.”

LES Silicon Valley Webinar "Funding IP Enforcement to Support Licensing and Monetization"

The Silicon Valley Chapter of the Licensing Executives Society [LES] is hosting a webinar titled, “Funding IP Enforcement to Support Licensing and Monetization” on February 24 from noon to 1:30 pm [Pacific Standard Time].  Here are details concerning the event:

Program:
The LES Silicon Valley Chapter is pleased to present this webinar in which leading experts will provide insight into the funding of IP enforcement to support licensing and monetization. Whether you're trying to protect a product, license your IP or monetize, chances are that expensive litigation will be required.

The webinar will explore the various aspects of financing the litigation process, including:

• Realities of doing licensing without litigation
• Financing litigation from the point of view of funders and companies/attorneys seeking funding
• How litigation funding may influence royalty rates or asset valuation
• Examine various options that are available
• What kind of cases are most suitable for financing
• Typical deal structures
• Details of the process and how long it takes
• U.S./Non-U.S. IP assets
• Other important considerations/lessons learned

Panel:
Michael Gulliford, Founder/Managing Principal, Soryn IP Capital Management, LLC
Phil Hartstein, President and CEO, Finjan Holdings, Inc.
Jeremy Pitcock, Founder, The Pitcock Law Group
Ron Vaisbort, General Counsel & Corporate Secretary, Ivalua
Moderator: Dave Stevens, Stevens Law Group

​Panel Bios:
Michael Gulliford, Founder/Managing Principal, Soryn IP Capital Management, LLC
Michael is the Founder of the patent advisory firm Soryn IP Group, as well as its sister company Soryn Capital, which invests significant capital in a host of patent-centric opportunities.  Prior to founding Soryn, Michael was a partner in the IP Litigation group of Kirkland & Ellis LLP.  At Soryn, he is a trusted advisor and investor to a number of the world’s most prestigious universities, law firms, companies and inventors.  He guides the management of private and publicly traded companies with respect to patent strategy, and has been the name behind almost two hundred million dollars in patent related deals.  Michael has also repeatedly been recognized as one of the Leading IP Strategists in the World.

Phil Hartstein, President and CEO, Finjan Holdings, Inc.
Phil is President and Chief Executive Officer of Finjan Holdings, Inc. and oversees the direction and management of current assets and future investments as well as working with the company’s executive management team to execute the shareholders vision as a public technology company.  Phil has worked in a number of technology and intellectual property related roles for over a decade. He started with a boutique IP law firm, worked in an in-house IP function for a VC funded startup, spent time in IP consulting and IP brokerage firms, and prior to joining Finjan spent four years with two groups focused on bringing both private and public market capital, expertise, and credibility in licensing and enforcing patent rights on behalf of owners.

Jeremy Pitcock, Founder, The Pitcock Law Group
Jeremy's current practice involves counseling clients in all areas of intellectual property, with a particular emphasis on patent litigation.  He serves as lead counsel on a variety of patent matters, and has been involved in all aspects of trial and appellate practice before federal courts throughout the country.  He has successfully argued all phases of litigation including at trial and at various summary judgment and Markman hearings, in diverse fields such as, Internet and mobile technology, authentication and encryption, fiber optic networks and various optical components, network and microprocessor architecture, computer software, Ethernet routing and communications, semiconductor manufacturing and fabrication, pharmaceutical inventions and business methods. Jeremy Pitcock also has served as lead counsel in copyright (including computer-related matters), trademark and trade secret litigation.

Ron Vaisbort, General Counsel & Corporate Secretary, Ivalua
Ron is a serial general counsel to world-class software and services companies. Prior to Ivalua, Ron served as the chief legal officer to MemSQL, C3.ai, Good Technology and Trillium Digital Systems. A veteran of the technology, media, and entertainment industries, Ron has been at the forefront of numerous innovative business concepts -  as both an attorney and business leader for startups as well as Fortune 100 companies such as Intel and Toshiba. Ron’s expertise is building and leading global legal and business development teams, and spans IPO/M&A readiness, international IP creation, data privacy and protection, commercialization strategy, licensing, and technology alliances.

Moderator: Dave Stevens, Stevens Law Group
Dave’s IP practice includes patent prosecution, transactions, due diligence work, agreements, opinions (including validity, infringement, patentability, right-to-practice (RTP), and freedom-to-operate (FTO) opinions), counseling, offensive and defensive patent issues, licensing, and litigation.  The technical focus of his practice includes electronics, computer technology, automotive technology, communications, optical systems, green technologies, software, semiconductors, and mechanical devices.  He also serves as an expert witness in technical and intellectual property legal issues and has been called as a fact witness in enforcement actions involving the many patents he has written. He also is an expert in copyright (including software, publications, products and artworks, and other copyrightable forms) and open source issues. He works with foreign IP firms and foreign clients with respect to domestic and international patent prosecution, including Patent Cooperation Treaty (PCT) work.

Here is the link to register: Licensing Executives Society (LES) (lesusacanada.org).  The cost for non-LES members is $69.

Is monetization a necessary part of a complete patent strategy?

How far should a company take its patent strategy? Is there some ultimate trajectory that serves as a benchmark for a company committed to making patent strategy an integral part of its activities? These questions arose in reading the highly revealing article about the patent strategy adopted by the Amsterdam-based satellite navigation system (or satnav) company, TomTom, here. Entitled “The TomTom route” and written by John van der Luit-Drummond, the piece appeared in the May-June 2014 issue of Intellectual Asset Management magazine. It makes for edifying reading. The article traces the steps taken by the company, under the guidance of savvy IP veteran Peter Spours, as the company moved from effectively no patent protection to a sizeable and effective patent portfolio. More specifically, under Spours’ careful watch, the company has sought both to use patents to protect its home-grown technology and to acquire third-party patent portfolios principally to provide a counterweight against patent challenges by both competitors and NPEs. According to Luit-Drummond’s account, Spours’ two-pronged patent strategy has enjoyed unusual success, with particular attention to the company’s ability to purchase useful third-party patents.

So far so good. But the article then goes on to describe how TomTom is contemplating a third prong to its patent strategy, which will enable it to “monetize” patents. The article explains:

“Now that TomTom has successfully safeguarded its position in the market, attention is focusing on how the company can turn its intellectual property into a meaningful revenue generator and transactional tool. ‘This is something you can only do once you become a mature company’, states Spour.’ I have started to prompt those discussions with the board, as it one of the ways in which we can grow. I don’t view IP as any different from money. The advantage in IP is that you can replicate it, but money doesn’t replicate very easily.’

One of the most obvious ways to monetize these assets would be to begin using them assertively; but this would mark a drastic shift from the exclusively defensive strategy which TomTom has espoused to date. However, Spours admits that without such a change in approach, efforts at commercialization may well be doomed to failure. ‘If we start licensing, we will have to change our strategy to at least a partially assertive one,” he says. ‘We have never been patent assertive before, but that is not because we don’t have a strong portfolio.’

The sense of these comments is that a robust and complete patent strategy by a successful and mature company requires that its patents need to be monetized—“I don’t view IP as any different from money”. Patent monetization seems to be viewed as an axiomatic element of a successful patent strategy. Certainly, after nearly two decades of being told that patents are an asset class waiting to be commercially exploited, it is understandable whence this view derives. But such an approach seems too narrow, where the challenge is how to quantify the contribution made by a successful patent portfolio to a company’s competitive position and bottom line. In this sense, “monetizing” patents is an ongoing process of assuring that the company’s R&D continues to be patent-protected and that the company has an adequate patent portfolio to fend off third party legal attack. For many companies, these activities are a full time IP occupation.

But even if a company can free up the necessary resources to enable it to seek to monetize its patents in the licensing sense, just how eager should a company be to jump on this bandwagon? As Spours himself recognizes, such monetizing will likely require a substantial change in the way that patents are viewed by the company. How many companies can assimilate and integrate the two quite different mind and skill sets—defensive versus offensive uses of patents-- and organize the resources and staff necessary to handle these diverse aspects of patent practice? How many companies are prepared for the potential managerial distraction that often accompanies an offensive litigation policy (as expressed euphemistically, becoming “patent assertive”)? How many potential licensees are actually out there, to be reached via litigation or otherwise? After all, Qualcomm, here, and its world-beating licensing program are the exception and not the role. Consider the report this week that Intellectual Ventures will be laying off 20% of its staff, here. However this move is explained, it points to the uncertain nature of relying on licensing and the like as a business model. The upshot is that whether patent monetization as part of one’s business strategy is not for everyone. Depending upon the circumstances, a successful patent strategy may, or may not, contain a licensing component itself driven by engaging in patent assertion activities.