Catherine M. Polizzi

Partner | Palo Alto

cpolizzi@mofo.com | (650) 813-5651

cpolizzi@mofo.com
(650) 813-5651

My passion is protecting complex, cutting–edge biotech and pharma innovations as they emerge from laboratories to commercialization, ultimately reaching millions of people around the world.

Intellectual versatility combined with incisive, pragmatic counseling and business acumen is the hallmark of Catherine’s practice.

Catherine helps emerging and established companies through the challenging process of obtaining patents, and provides strategic, effective portfolio counseling and management, as well as strategic advice surrounding freedom of operation and other forms of IP assessment. She develops valuable, strategic portfolios around breakthrough therapies in a variety of areas, including:

  • Cancer
  • Cancer immunotherapy
  • Autoimmune diseases
  • Inflammatory diseases
  • Infectious diseases
  • Cardiovascular diseases
  • Metabolic disorders
  • Neurodegenerative diseases (such as Alzheimer’s disease)

She has significant experience in a wide spectrum of technology areas, including biologics (such as antibodies and polypeptides), nucleic acids, precision medicine, diagnostics, cell therapy, including T cell technologies, such as chimeric antigen receptors, drug formulation technologies, drug delivery technologies, such as nanotechnologies, microfluidics, drug screening systems, amplification technologies, genetic screening, regenerative medicine, nutraceuticals, spectroscopy, and organic chemistry, including small molecule drugs.

Catherine’s unique background, ability to integrate IP with a given business model to translate into meaningful risk assessment and advice, and highly effective communication skills in critical settings such as R&D, all phases of product development, and investment contexts enable her to provide effective, creative solutions to the significant challenges faced by clients.

IP Leadership for Transactions, Financings, and Acquisitions. Catherine’s practice also includes due diligence evaluation and counseling in the context of venture investment assessments and in connection with public and private financing, spin–offs, partnerships, and mergers and acquisitions, where her IP strategies have helped drive the value of multibillion dollar deals.

Representative transactions resulting from Catherine’s leadership include:

  • The $14 billion acquisition by Pfizer of client Medivation, as well as the previous $225 million Pfizer investment in Medivation.
  • Myriad Genetics’ $375 million acquisition of Counsyl, Inc.
  • Celgene Corporation’s $9 billion acquisition of client Juno Therapeutics and earlier $2.9 billion acquisition of client Abraxis BioScience.

Catherine was retained by both Pfizer and Celgene for ongoing patent strategy and counseling work on the existing patent portfolios and with expanded representation of the parent companies following these acquisitions. Other representative transactions where her astute leadership has proved invaluable include:

  • Shiseido’s acquisition of client Olivo Laboratories.
  • Alpine Immune Sciences’ $48 million Series A financing and subsequent $90 million merger with Nivalis Therapeutics, resulting in a publicly traded company; SQZ Biotech’s $72 million Series C financing.
  • Lyndra Therapeutics’ $55 million Series B financing.

Strategist in Legal Challenges and a Key Member of Litigation Teams. In addition to helping create value and commercialize her clients’ technologies, Catherine devises strategies and defenses to fortify their patents in the event of legal challenges by competitors. Accordingly, she renders advice on all aspects of patent positioning, including opinions on patentability, validity, freedom of operation, infringement, and competitor IP evaluation. She also works in the area of third–party challenges, such as inter partes review (IPR) and oppositions.

A Recognized Leader. From 2006 through 2009, Catherine served as the chair of the firm’s Patent Prosecution & Counseling Group and co–chair of the firm’s Intellectual Property Group. Chambers USA noted that Catherine “maintains a strong reputation for her capabilities advising biotechnology clients on portfolio management and other IP matters,” while clients note that she is “a great strategic thinker, great at flagging the high–level questions and brings a good business perspective,” and praise her for “bring[ing] a good business perspective to IP efforts which is not always evident with other IP attorneys.”  Catherine has also received the following awards and accolades:

  • Inducted to the Legal Media Group Life Sciences Hall of Fame in 2018
  • Ranked by Chambers USA 2013–2019 in Life Sciences: IP/Patent Litigation and Intellectual Property: Patent Prosecution 2018–2019
  • Recommended as a leading lawyer by Legal 500 U.S. for 2012–2018
  • Managing Intellectual Property – Top 250 Women in IP (2013, 2014, 2018, 2019) and Global IP Star for 2018/2019 and 2019/2020
  • Recognized as a Life Sciences Star by Legal Media Group Life Sciences for 2012–2019 and selected as the Legal Media Group Life Sciences 2017 Patent Strategy & Management Attorney of the Year for California
  • Selected as one of the Top 100 Intellectual Property Lawyers in California by the Daily Journal for 2009–2019
  • Named to The Recorder’s 2013, 2015, 2016, and 2017 Women Leaders in Tech Law list for demonstrating leadership and expertise in solving the most pressing legal concerns tech companies can face
  • Recognized in the IAM Patent 1000 – The World’s Leading Patent Practitioners 2014–2017
  • Named to the 2012–2018 Northern California Super Lawyers list and in the Super Lawyers Women’s edition (2016–2018)
  • Recognized in the Lawyers to the Innovators section of the 2013 edition of the Financial Times U.S. Innovative Lawyers report
  • Selected as one of the 100 most influential women in Silicon Valley for 2013 by the Silicon Valley Business Journal
  • Recognized as a leader by Euromoney Legal Media Group and received its 2013 Americas Women in Business Law Award for best in life sciences

Select Representations

Catherine is patent counsel to numerous publicly traded and privately held companies, with many new client relationships resulting from her strong reputation in the life sciences industry. A selection of her representative matters include the following:

  • Genentech, the world’s first and most successful biotechnology company, relies on Catherine’s strategic patent counseling and prosecution services for its most difficult and challenging patent matters. Her work involves developing overall patent strategy, patent application drafting, and prosecution for key technologies. Her high–value work for Genentech also includes strategic assessment of key and novel technologies, as well as inter partes review and patent litigation support and advisement.
  • Juno Therapeutics has continuously relied on Catherine for patent strategy and prosecution. Juno is one of the best–funded start–ups in biotechnology history. It went on to become a publicly traded company in 2014 and ultimately was acquired by Celgene in 2018 for $9 billion; the strength of the patent portfolio that Catherine crafted helped drive the valuation for the deal. She led the IP team on the acquisition.
  • Celgene calls on Catherine for its patent strategy, drafting, and IP due diligence matters. She worked with Abraxis BioScience for many years in a similar capacity to help develop their IP position for the highly successful cancer drug, Abraxane. Catherine then counseled the company through its $2.9 billion acquisition by Celgene Corporation, including providing significant IP strategy and due diligence counseling. This IP platform was a major component of the valuation of the company. She was subsequently engaged by Celgene following the acquisition.
  • Medivation has turned to Catherine as trusted outside patent counsel for more than a decade. She created the company’s initial patent strategy and portfolio. She led the IP due diligence team for Medivation’s acquisition of BioMarin’s phase III cancer drug, talazoparib, for $410 million upfront with another $160 million in milestones. She also led the IP due diligence for Medivation’s $14 billion acquisition by Pfizer in 2016. She continues to provide strategy and prosecution counsel on Medivation’s patent portfolio following the acquisition.
  • Some of Catherine’s additional representative clients include clinical–stage and start–up companies, such Dynavax Technologies, Cytokinetics, Alpine Immune Sciences, Aimmune Therapeutics, Nurix Therapeutics, Seattle Genetics, Frontier Medicines, and Sirenas, and Boston–based SQZ Biotechnologies, Lyndra, Dewpoint Therapeutics, and TARIS Biomedical.
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