Ian A. Nilsen advises life sciences and medical device clients on a wide range of transactions involving intellectual property, including technology licensing, complex collaborations, mergers and acquisitions, manufacturing, supply and distribution, research and development, intercompany structuring, and other commercial agreements. Ian also leverages his patent prosecution background to counsel clients on a variety of patent issues, including patent portfolio strategy, life cycle management, pre-litigation review, and freedom-to-operate.

Experience

Strategic IP Transactions

  • Represented Gilgamesh Pharmaceuticals in a collaboration and option-to-license agreement with AbbVie, valued at up to $ 2.6 billion, to develop next-generation therapies for psychiatric disorders.
  • Represented Novavax Inc., in a co-exclusive licensing agreement with French pharmaceutical company Sanofi, valued at up to $1.4 billion, to sell Novavax COVID-19 vaccine and collaboration to create a combined global COVID-19 and influenza shot.
  • Advised precision medicines company MOMA Therapeutics in a strategic collaboration and licensing agreement with Swiss pharmaceutical leader Roche, valued at up to $2 billion, that will provide Roche with access to MOMA’s KnowledgeBase platform for the identification of a certain number of novel drug targets involved in promoting cancer cell growth and survival.
  • Advised Novo Nordisk in a collaboration with Valo Health, valued at up to $2.7 billion, to discover and develop novel treatments for cardiometabolic diseases such as heart attack, stroke and diabetes using real-world patient data and artificial intelligence machine learning models to accelerate the process of discovering and developing new small molecule therapies.
  • Advised TPG in connection with a unique simultaneous carve-out acquisition of AT&T’s television business, including DirecTV and AT&T TV, and purchase of a 30% stake in the newly carved-out business for $1.8 billion
  • Represented TRexBio in a multi-year research collaboration and exclusive worldwide license agreement with Eli Lilly and Company, valued at up to $1.65 billion, to develop novel therapies for the treatment of immune-mediated diseases.
  • Advised Takeda Pharmaceutical Company Limited:
    • in a collaboration and exclusive license agreement with Degron Therapeutics, valued at up to $1.2 billion, to discover and develop novel molecular glue degraders for multiple targets in oncology, neuroscience and inflammation.
    • in an exclusive license and research and development collaboration agreement with JCR Pharmaceuticals to develop gene therapies directed towards lysosomal storage disorders through the use of JCR's proprietary technology.
    • in a license agreement under which Innate Pharma SA, valued at up to $410 million, grants Takeda exclusive worldwide rights to research and develop antibody drug conjugates (ADC) with a primary focus in Celiac disease.
  • Represented Xeris Biopharma Holdings in a platform research evaluation, collaboration and option agreement with Regeneron Pharmaceuticals, Inc. to use its proprietary drug-formulation platform, XeriJect, to develop ultra-highly concentrated, ready-to-use, small volume subcutaneous injections of two undisclosed monoclonal antibodies (mAbs) developed by Regeneron.
  • Represented HotSpot Therapeutics in an exclusive, worldwide collaboration and option to license agreement with AbbVie, valued at up to $335 million, for HotSpot’s new class of small molecule IRF5 modulators for the treatment of severe autoimmune diseases.
  • Advised Blackstone Life Sciences in its $250 million commitment and combination with gene editing drugmaker Intellia Therapeutics and German cell manufacturer Cellex Cell Professionals GmbH to create a new CAR-T platform company to develop cell therapies for cancer and autoimmune diseases.
  • Represented Aera Therapeutics in two foundational exclusive license agreements to develop next generation delivery technology and gene editing techniques from a renowned research center.

Patent Strategy

  • Represented a pharmaceutical company in pre-ANDA litigation review of an antiviral therapy.
  • Advised Strata Oncology on patent filing strategy for their oncology database.
  • Regularly advise both pharmaceutical and strategic investment clients on patent term extension filings and loss of exclusivity of pharmaceutical products.
  • Represented multiple pharmaceutical companies in freedom-to-operate analysis and legal opinions, including for companies developing delivery technology, CAR-T therapeutics, small molecules, and medical devices.
  • Represented a medical device company in a royalty arbitration dispute related to stent patents.

Areas of Practice