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Sampling of Case History and Experience

Biotech / Pharma / Medical
Oncology Vaccines Non-exclusive license for immunotherapeutics. Upfront fee, milestones, royalties. Over $10M.

Drug Discovery

Collaboration to validate platform for start up company. Research fees and shared IP rights with Roche®.

Vaccine

Non-exclusive license for vaccine technology. Upfront fees, milestones, royalties, IP rights.

Anti-aging Therapeutics

License and joint development with P&G ® for dermatology applications. Research fees and royalties. Applications limited. Shared IP.

Protein Therapeutics

Research collaboration to validate platform for start up company. Research fees and shared IP rights.

Immunology/Oncology Planning/Leading of Translational biology, pharmacology and toxicology functions in support and advancement of medical work.
Pharma Research Partnership Created and led new RA research program, set disease control strategies in metabolic and muscular skeletal disease at large Pharma.
Chemistry / Polymers / Material Sciences

CombinatorialChemistry

Discovery collaboration with Exxon® advanced materials. Combi-Chem platform to discover new class of advanced materials. Over $30M deal. Upfront, milestones, license royalties on the materials. Non-exclusive on use of platform in addition to residual royalties from future inventions from platform use.

Advanced Materials

Formed global partnership to develop, manufacture, distribute and license advanced materials. Shared research, IP and promotion. Mitsui to build manufacturing plant and obtain Japanese market revenue only.

Printed Circuit Board

Joint development and license program using advanced materials to replace epoxy PCB’s. Research fees, shared IP. Ciba to manufacture and distribute. Royalties. Deal over $8M.

Monomers, Engineered Polymers, Fabricated Parts

Licensed technology and formed 50/50 JV with Ciba® to launch new business in Europe as extension of US business. Upfront payment, fully budgeted operation to develop applications and customers. Royalties and IP rights in remainder of world. Deal over $10M..

Advance Materials Platform for Engineered Plastics, Circuit Boards, Flat Screens Licensed technology and formed JV to share research, IP and promotion rights. Nippon Zeon® (NZ) to have Japanese market. NZ conducts research solely until tech validated (risk lowered). NZ to provide monomer for US and Europe. NZ pays minimum and variable royalty. Shared promotion.

Flat Panel Displays, Advanced Materials

Joint development with 3M® for development of flat panel display application using advanced materials. Research fees, royalties and IP rights. Secured NIST grant of $12M in partnership.

Engineered Polymers / Advanced Materials

Three-way joint development to develop high performance polymer materials product. BASF® to manufacture and shared distribution rights. Research fees and royalties.

Clean Energy

Alternative Fuel Research (Methanol)

Secured NIST grant of $8M in partnership. Joint development program. Research fees and royalties. Shared IP.

Fuel Cell Reformers

Partnership to design and produce fuel cells. NIST application for $8M. Research fees, IP rights, and shared income. McDermott® to build manufacturing facility. Joint research.

Catalytic Gas Turbine Business development on first gas turbine commercialized with catalytic combustor.
SCR Catalyst Regeneration Due diligence, negotiation and acquisition of company holding unique regeneration technology.
Engineering Sciences

Biochemical Treatment
of Waste

Exclusive field of use, Up-front payment, running royalties, minimums,
sublicensing, IP costs, diligence.

Electronic Article Surveillance

Non-exclusive, Up-front payment, running royalties, minimums, diligence, supply
contract.

System for treating high sulfur petroleum feedstocks and natural gas

Non-exclusive, upfront payment, running royalties, minimums, diligence, supply contract.

 

Software

CRM Application

Multi-year contract GM US to provide marketing, pricing, logistical analysis and projections. Designed customized disparate database, established secure ISP connections and supported both ongoing and consulting work for client.

Bioinformatics

Collaborative research informatics deal. Designed product for Lilly® with residual ownership (commercial IP rights) for Industry distribution after 12 months. Research fees and promotion support.

Bioinformatics

Collaborative research informatics deal. Designed product for Amgen® with residual ownership for Industry distribution after 12 months. Research fees and promotion support. (Both Lilly® and Amgen® products launched new business into pharmaceutical channel).

Bioinformatics / Cheminformatics

Designed strategy and co-founded company within corporate parent incorporated firm, raised money, built staff, located merger partner, negotiated spin-out from parent and merged with partner. Merged new combined operations and reorganized staff, modified strategy, trained staff, restructured balance sheet and ownership and launched new business with revenue in first year.

 

Electronics and Optics

Flat Panel Display

Exclusive field of use, equity, up-front payment, running royalties, minimums, diligence, sublicensing,2yr R&D contract.

Advanced Materials
for Circuit Boards

Joint research with IBM® and Georgia Tech. Obtained NIST grant ($12 M) to develop advanced materials for electronic applications.

Company Start-up, Fundraising, M&A

Medical Device Company

Out-licensed technology from University of California; co-founded company with four partners. Applied for SBIR funding and launched clinical trials.

Combinatorial Chemistry

Initiated and designed strategy for new company. Formed 50/50 joint venture with biotech firm. Incorporated new stand-alone company. Launched new company into combinatorial chemistry business within 7 months.

Wireless and Noise Reduction

Completed business plan, investor presentation, organized road show and helped raise $5 million for hi-tech company.

Drug Discovery Company

Revamped corporate strategy, business plan and investor presentation for Nuada Pharmaceuticals. Secured additional funding from existing investor group.

Informatics and Data Mining
Company

Spun out business unit, acquired competing firm and secured equity and debt financing from parent company.

Advanced Materials Company

Started up advanced materials business. Took 25 patents and 5 people to 80 people and $25 million in revenue within 6 years. Established global business using Japanese Nippon Zeon® and French TOTAL® joint venture partners.

Semiconductor Company CEO, Founder, launched company and took public
Venture Capital/Investment Banking Invested in over 20 firms in both life science and hi-tech, achieving a 30% return overall.
Computing / Internet
Search Engine Exclusive field of use, equity, running royalties, minimums, diligence, sublicensing,
1yr r&d contract.
Environmental

Biochemically Enhanced Oil
Treatment

Exclusive field of use, up-front payment, running royalties, minimums, IP costs, diligence, sublicensing, 1yr tech transfer contract.
Purchasing, Outsourcing, Labor Agreements

Purchasing

Negotiated and managed over 25 major raw material and other key purchasing agreements ranging in value from $2M to over $20M.
Outsourcing Negotiated and managed a large number of single and multi-year agreements for manufacturing, supply, distribution, consulting, market research, press and public relations, legal and financial services.
Labor contracts Negotiated two labor agreements for 4 of company’s manufacturing operations
Government and Academia

UCSF

Negotiated license rights for Human Embryonic Stem Cell lines. Required approval of four parties including NIH and U of WI. Also extended research agreement for specific applications of stem cells.

U of Wisconsin

Negotiated new agreement for stem cell rights. Had to rebuild poor relationships and trust issues.

Academic Research
Agreements

Negotiated over 30 agreements to conduct research in exchange for payments and IP rights with universities in US and a few in Europe.

NIST/NIH Led teams to apply and present for grant and joint funding from NIST and NIH. Presented five times (over $50M) getting awards four times including a $26 M award, second largest in history of NIST. Also managed three of these.