SOURCE: Licensing Executives Society

October 17, 2007 10:33 ET

Licensing Executives Society Announces 2007 Deals of Distinction Awards™

VANCOUVER, BC--(Marketwire - October 17, 2007) - Intellectual property (IP) -- specifically patents, copyrights, trademarks and trade secrets -- is the fundamental unit of innovation in our knowledge-based economy. Agreements that facilitate transfer of IP help establish the value for innovation. License agreements also help secure investments to advance research and realize the promise of innovation for the benefit of society.

However, creation of clear agreements that permit IP transfer at fair value is a complex art, and thus ripe ground for innovation in its own right.

To honor the best of these deals, the Licensing Executives Society (USA and Canada), Inc. (LES) today presented Deals of Distinction Awards™ to winners in five industry sectors. The awards were given at the LES Annual Meeting in Vancouver, British Columbia, Canada.

"2007 has been a year of heightened debate on the importance of intellectual property," said Jake Schaible, Chair of the Deals of Distinction Award™ Committee, and incoming Chair of the LES Healthcare Industry Sector. "In the United States and elsewhere, new patent legislation is being actively considered which may radically change the system for protecting such inventions. It is against this turbulent IP background which we announce this year's winners of the LES Deals of Distinction Awards™."

The 2007 LES Deals of Distinction Awards™ winners are:

--  Consumer Products Sector: "The J&J Acquisition of Pfizer Consumer
    Healthcare," between Johnson & Johnson and Pfizer, Inc.
--  Chemicals, Energy and Materials Sector: "The Licensing of LSV®
    Burners for Ethylene Manufacture," between Air Products and Chemicals, Inc,
    the John Zink Company, and affiliates of the Technip Group.
--  HealthCare Sector: "The Global Partnership on Hematide™
    (erythropoiesis-stimulating agent)," between Affymax Inc and Takeda
    Pharmaceutical Company Limited.
--  High Technology Sector: "The F-16 Technical Manual Viewer Deal,"
    between Lockheed Martin Aeronautics and Jouve Aviation Solutions, as
    facilitated by Fluid Innovation Group.
--  The Industry/University and Government Laboratory Transactions Sector:
    "The UGT1A1 Human Gene Diagnostics Licensing Program," between Mayo Clinic
    and the University of Chicago.
    

Major Acquisition in Consumer Health Care Solidifies Market Position for One, While Allowing the Other to Improve Margins and Focus on Core Business

The 2006 $16.6 billion cash deal by J&J to acquire Pfizer's Consumer Healthcare division significantly expanded Johnson & Johnson's consumer business.

Pfizer Consumer Healthcare's global business of personal care and over-the-counter (OTC) products achieved sales of $3.9 billion in 2005. Worldwide market-leading brands include Listerine oral care products and the Nicorette line of smoking cessation treatments. Other brands include Lubriderm®, Visine®, Neosporin®, Sudafed®, Benadryl® and Purell®.

The combined portfolio of OTC brands solidifies J&J's global market-leading OTC franchise. Under the deal, J&J also acquired the U.S. OTC switch rights to the antihistamine Zyrtec, upon patent expiration and FDA approval. The Pfizer brands complement the J&J stable of well known brands, including Band-Aid® Brand Adhesive Bandages, Tylenol®, Reach®, Splenda® and many others. As a result, J&J is now clearly the world's premier consumer healthcare company.

This deal is distinctive in that it is transformational, both in terms of the size and strategic result for the parties involved, but also given its impact on the nonprescription healthcare portion of the Consumer Products industry.

"This major acquisition indicates the incredible value of brand in the consumer products industry," said Dan O'Neill, 2007 Co-Chair of the LES Consumer Products Industry Sector.

Spark of Innovation Lights Up Savings and Less Pollution in Combustion Technology

Air Products and Chemicals, Inc, the John Zink Company, and two units of the Technip Group which were party to this agreement, specfically Technip USA and Technip Benelux B.V., earned honors for a deal on "The LSV® Burner for production of Ethylene."

Air Products' LSV® Burner was originally designed to permit lean combustion in the company's own hydrogen production applications. Such lean combustion significantly decreases nitrous oxide air emissions, thus providing environmental and operational benefits. However, Air Products became aware that this technology has broader uses outside its own uses, and partnered with the Technip Group and John Zink Company to explore other applications including use in the production of Ethylene.

This deal is distinctive as it is a great example of a company monetizing additional applications of an invention which started out only as a solution to an internal need.

According to Leslie Goff, 2007 Co-Chair of the LES Chemicals, Energy and Materials Industry Sector, "The John Zink Company and Technip Group has clearly demonstrated the value the IP brings when one looks outside the original target application of the Technology and leverages the Technology in alternate areas."

Global BioPharma Deals Come Full Circle

The 2006 global partnership on Hematide™, Affymax's erythropoiesis-stimulating agent, with Takeda, was a follow on to an earlier Japan-only development and commercialization agreement between the parties, and is an exciting milestone in the evolution of biopharma partnering.

In the past, North American and European-based pharmaceutical companies dominated the global industry, and primarily viewed Japan-based companies as portals for distributing their drug candidates in Japan, or at most, parts of Asia. Soon thereafter, R&D candidates of the Japan-based pharmaceutical companies were recognized as import opportunities as well.

Historically, the Japanese-based companies primarily focused on their home market, and rarely had major operations beyond Asia. However, from the 1990s to today, as the relative attractiveness of the Japan market for pharmaceuticals started to wane, several of the largest and forward thinking Japanese pharmaceutical companies strategically diversified their geographic investments and focused on developing capabilities in Europe and North America. For example, Takeda's early moves included establishing, with global company Abbott, the TAP joint reseach partnership. Later, Takeda choose to establish a fully-owned U.S. affliliate, mirroring operations previously established in Europe, primarily to market the fruits of their own R&D efforts outside of Japan.

Major deals such as this one with Affymax serve to signal full globalization of top Japan-based companies, such that they should no longer be consider "Japanese Companies," but rather only "Global Pharmaceutical Companies." It also further highlights the increased competition among the global players to source in-licensed products, as well as the increased willingness of innovator companies and their backers to consider partnerships beyond the usual suspects.

"We are pleased to honor both Takeda and Affymax as the healthcare industry sector winners," said Lauren Silvernail, CFO and Vice President of Corporate Development for ISTA Pharmaceuticals, Inc. and 2007 Chair of the LES Healthcare Industry Sector. "The choice was a difficult one, as a number of interesting transactions were completed in healthcare this year. We congratulate all who were nominated for this prestigious award."

Aviation Information Solutions Take Deal Making to New Heights

This year, the LES High Tech Sector chose to recognize Jouve Aviation Solutions, Lockheed Martin Aeronautics, and the Fluid Innovation Group, for the F-16 Technical Manual Viewer Deal.

This was an interesting deal which allowed Lockheed Martin to monetize technical content on the F-16 and placed the software viewer and related IP assets in the hands of Jouve, which in turn provided access to friendly air forces that use the information for F-16 repair and maintenance. The arrangement allows Lockheed to focus on development and support of next generation airframes, while ensuring technical support to those who use the F-16, and is a good example of "out-of-the-box" deal making for Lockheed. The relationship between Lockheed and Jouve has already been expanded to include technical manual content on several other Lockheed airframes.

Partner evaluation and deal execution was facilitated by the Fluid Innovation Group on behalf of Lockheed Martin Aeronautics.

"What makes companies successful is their ability to focus on their core competencies. This deal is a seminal example of such an arrangement," said Brad Hulbert, 2008 Chair of the LES High Tech Industry Sector.

Innovative Deal Structure Optimizes Access to Cancer Diagnostic Technology

In late 2005, Mayo Clinic inked an interesting IP deal with the University of Chicago for a gene screen which predicts a patient's risk of side effects from chemotherapy. The UGT1A1 test was developed and patented by Mark J. Ratain, MD, and colleagues at the University of Chicago, and specifically provides information on which patients possess a genetic variant which alters the metabolism of irinotecan HCl (Camptosar®), a key component of the standard first-line treatment for advanced colon cancer and others.

Mayo acquired an exclusive license to the technology, and began offering the test to patients at Mayo and also those served nationwide through its reference laboratory, Mayo Medical Laboratories. The exclusive license included the right to sub-license and Mayo actively pursued sub-license agreements with other academic medical centers, reference laboratories, diagnostic test companies, and pharmaceutical companies to ensure that patients everywhere have access to this important screening test. While a 2005 deal, the LES Deal of Distinction Award™ Committee supported this nomination given the element it felt was most distinctive, and the promise by Mayo to broadly sublicense the IP. This was not fully fulfilled until 2006, when Mayo signed the first of several sub-licenses with several third parties. Revenue from Mayo Medical Laboratories testing and technology licensing is used to support medical education and research at Mayo Clinic. Camptosar® is a registered trademark of Pfizer Inc.

"We are pleased to convey this award to the Mayo Foundation for Medical Education and Research and the University of Chicago," said Robert R. Gruetzmacher, Ph.D., Co-Chair of the LES Industry/University and Government Laboratory Transactions Sector. "Their licensing arrangement provides for the widest use of unique gene-based diagnostic technology to assist in determining appropriate therapy in cancer patients."

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