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ITRI Technology Spinout Showcase

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Please join us for an event where we’ll be hosting Industrial Technology Research Institute (ITRI) as our honored guest and showcasing their 2023 R&D 100 Awarded Technologies.

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Please join us for an event where we’ll be hosting Industrial Technology Research Institute (ITRI) as our honored guest and showcasing their 2023 R&D 100 Awarded Technologies. Founded in 1973, it pioneered in IC development and started to nurture new tech ventures and deliver its R&D results to industries. ITRI has set up and incubated companies such as TSMC, UMC, Taiwan Mask Corp., Epistar Corp., Mirle Automation Corp., and Taiwan Biomaterial Co.Discover a sneak peek at ITRI’s spinouts, while MoFo delves into essential insights for international startups aiming to establish themselves in the United States.Topics will include:<ul><li>Key developments in the technology and life sciences sectors “2023 R&D 100 Awards”</li><li>Establishing Delaware C-Corps and “FLIPs”</li><li>Spinouts and venture financings</li><li>Patent prosecution</li><li>Technology licensing, including Life Sciences + AI licensing</li><li>AI regulation and compliance</li><li>We hope to see you there!</li></ul>To register, kindly email your LinkedIn profile to Vishal Singh at <a href="mailto:ECVCevents@mofo.com">ECVCevents@mofo.com.</a><hr>

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Matt Ferry is a partner in the San Diego office and a member of the firm’s Technology Transactions Group, advising innovative and mission-driven life sciences and technology companies.Matt has more than a decade of experience in structuring, drafting, negotiating, and executing strategic transactions where intellectual property (IP), technology, data, and information assets drive the deal. Matt is passionate about and focuses his practice on assisting innovative companies in industries where the betterment of people’s lives and the world is in view, including in the broader life sciences and technology areas, such as:<ul><li>Pharmaceuticals and biotechnology (including small molecule pharmaceuticals, biologics, nanotherapeutics, drug discovery, antibodies, cell and gene therapy, CRISPR and other gene editing technologies, drug delivery, immunology, and oncology); and</li></ul><ul><li>Medtech and healthtech (including medical devices, digital health, and other forms of software and hardware in diagnostic and therapeutic applications); and</li><li>Food and agriculture (including in plants and crop sciences, agriculture and farming, alternative proteins, animal and plant production, and food products and consumer goods); and</li><li>Cleantech (including renewable energy, biofuels, plastic recycling and carbon capture).</li></ul>Outside of his life sciences practice, Matt counsels clients in a variety of industries, including Internet of things (IoT), artificial intelligence (AI) and machine learning (ML), wireless standards, autonomous vehicles, semiconductor devices, distributed software, open-source software, and software as a service. Matt has solid experience advising startups in all aspects of IP hygiene, including invention assignment agreements and use of open-source software, as well as complex patent transactions involving standard essential patents (SEPs). Matt leverages his previous experience in patent prosecution and IP litigation to provide a holistic perspective and overall business strategy to his client’s transactions.He advises clients in connection with:<ul><li>Commercial contracts at all stages of technology and product development, including strategic alliances and collaborations, asset sale and purchase agreements, research and development agreements, supply, manufacturing, and distribution agreements, clinical trial agreements, service agreements, and material transfer agreements.</li><li>Patent and technology license agreements in both industry-to-industry and academic-to-industry settings.</li><li>IP and commercial contract matters that arise in connection with larger corporate transactions such as mergers and acquisitions and venture capital investments.</li></ul>In Matt’s past experience as a patent prosecutor and IP litigator, he handled cases involving patent infringement and invalidity, copyright infringement, and trade secret misappropriation. He also draws on his technical knowledge that he developed in his undergraduate work at University of California, Berkeley, his graduate work at the California Institute of Technology, and his hobbyist scientific pursuits, including in physics, software, microwave instrumentation, and optics.Matt also maintains an active pro bono practice representing small business owners and nonprofits in their commercial agreements. Recently, he assisted a low-income entrepreneur in drafting her customer-facing service agreements.<h4>Representative Matters</h4><h5>Pharmaceuticals and Biotechnology</h5><ul><li> Represent multi-national pharmaceutical company in its manufacturing agreements.</li></ul><ul><li>Represent public mRNA technology company in its patent licensing strategy and evaluation agreements.</li><li>Represented Eton Pharmaceuticals, Inc. in connection with its asset sale of several of its branded and generic injectable products to Dr. Reddy’s Laboratories.</li><li>Represented public pharmaceutical company in its purchase of three product lines from a Fortune 500 public pharmaceutical company.</li><li>Represented public pharmaceutical company in its sale of three product lines to private equity-backed purchaser.</li><li>Represented public pharmaceutical company in numerous patent and technology asset purchases and sales, exclusive licensing arrangements, commercial alliances, and co-promotion agreements.</li><li>Represented public pharmaceutical company in several patent and technology asset purchases and sales, including its sale of three product lines focused on rare neurological diseases and associated assets to a private purchaser.</li><li>Represented venture-backed pharmaceutical company focused on treating rare diseases in China in several exclusive license and supply agreements.</li><li>Represented U.S. academic institution in numerous patent and technology exclusive licensing agreements, sponsored research agreements, option agreements, and term sheet negotiations.</li><li>Represented nanotherapeutic company in numerous research and collaboration agreements and licensing agreements.</li><li>Represented CRISPR-based company in numerous evaluation agreements, material transfer agreements, and collaboration agreements.</li><li>Represented startup company in its gene modification research agreement templates.</li></ul><h5>Medical Devices and Health Technology</h5><ul><li>Represented medical device startup in its several exclusive patent and technology license agreements with a leading academic institution and its clinical trial agreements.</li><li>Represented digital health company in its collaboration agreement with a global distributor.</li><li>Represented medical device company in its multisite clinical trial agreements.</li><li>Represented public medical device company in its exclusive license and distribution agreement with global medical device distributor.</li><li>Represented medical device incubator in its form technology and service agreements, patent license agreement from an academic institution, and sublicense agreements.</li><li>Represented public medical device company in its patent purchase from an individual physician.</li><li>Represented medical device company in its multi-country distribution agreements.</li></ul><h5>Food and AgTech</h5><ul><li>Represent an innovative plant protein startup in all forms of its commercial contracts and licensing, including its university research agreements, grower agreements, evaluation agreements, and material transfer agreements.</li><li>Represent a plant genomics and gene editing company in its strategic alliance with a leading commercial nursery.</li><li>Represent a food storage company in evaluating outbound technology licensing models and its outbound license terms.</li><li>Represent a botanical active ingredient producer in its research collaboration agreement with a botanical ingredient biotechnology company.</li><li>Represent an agtech company in its outbound license of its proprietary gene design platform to a biotechnology company.</li><li>Represent a public agency in its licensing agreements for proprietary fruit varieties.</li><li>Represent an agtech company in all forms of its commercial contracts, including university research agreements, NDAs, material transfer agreements, and evaluation agreements.</li><li>Represent novel infant formula company in its dozens of supply and manufacturing agreements with its ingredient suppliers and formula manufacturers.</li></ul><h5>Clean Technology</h5><ul><li>Represent public carbon credit investing company in its collaboration agreement with air quality monitoring company.</li></ul><ul><li>Represent venture-backed clean technology startup in its international collaboration agreements.</li><li>Represent venture-backed clean technology startup in its technology license and service agreement with international public energy company and other licensees.</li><li>Represent venture-backed clean technology startup in its international collaboration agreements.</li><li>Represent venture-backed clean technology startup in its technology license and service agreement with international public energy company and other licensees.</li></ul><h5>Complex Patent Transactions</h5><ul><li>Represented global public semiconductor company in connection with its patent purchase form agreements.</li><li>Represented global public semiconductor company in its patent license and license-on-transfer agreement with another global public semiconductor company.</li><li>Represented leading wireless technology company in its patent cross-license with another leading wireless technology company.</li><li>Represented leading wireless technology company in its form standard essential patent (SEP) licensing agreements and term sheets.</li></ul><h5>On-Premise Software and SaaS</h5><ul><li>Represented private construction lender in its acquisitions of two real estate technology platforms.</li><li>Represented machine learning and natural language processing software company in its on-premises software and hosted services agreements.</li><li>Represented SaaS company in its services agreement with leading automobile manufacturers.</li><li>Represented artificial intelligence-based warehousing software company in its template software license and services agreement.</li><li>Represented software company in its source code license and services agreement to international software company.</li></ul><h5>Interactive Entertainment</h5><ul><li>Represented publisher in several game development agreements and content licensing agreements.</li><li>Represented developer in its publishing and distribution agreements.</li><li>Advised developer in its renegotiation of its publishing and distribution agreement.</li></ul><h5>Professional Services</h5><ul><li>Represented numerous professional service providers in their template and negotiated services agreements.</li></ul><h5>Venture Capital</h5><ul><li>Represented fitness technology startup in its $5.8 million Series A financing.﻿</li></ul>

Matthew Ferry

Partner

Aya Eguchi is a partner in the Technology Transactions Group.  Her practice focuses on transactions and counseling involving intellectual property and technology, with an emphasis on licensing and distribution arrangements, technology development and strategic alliance activities and technology transfers.Ms. Eguchi advises clients on transactional matters involving the acquisition, development, licensing and transfer of intellectual property, including the structuring and negotiating of joint ventures and strategic alliances; development and distribution agreements; software and technology licenses; and intellectual property components of mergers and acquisitions and other corporate transactions. As a native Japanese speaker, Ms. Eguchi has extensive experience working on cross-border transactions with clients from a variety of fields, including companies in the pharmaceutical, life sciences and medical device industries; software, IT and telecommunications companies; and multinational technology conglomerates.  She also provides pro bono legal services to several not-for-profit entities in connection with their commercial and intellectual property-related transactions.Before joining Morrison & Foerster, Ms. Eguchi worked as an IT consultant for a Fortune Global 500 management consulting firm, in Japan, Italy, France and the UK, focusing on strategic counseling for the design, development and implementation of technology solutions.Ms. Eguchi earned her J.D. from Cornell Law School in 2012, where she was a member of the Cornell Law Review.  Ms. Eguchi received her B.S.E. in both Biomedical Engineering and Electrical Engineering from Duke University in 2005. Ms. Eguchi is admitted to practice law in the state of California and is a registered patent agent with the U.S. Patent and Trademark Office.

Aya Eguchi

Marian Waldmann Agarwal is a partner in the Data, Cyber + Privacy Group at Morrison Foerster. She also co-leads the firm’s Artificial Intelligence Group and is a member of the global Environmental, Social, and Governance (ESG) Responsible Tech Committee. Marian’s unique blend of business and legal skills, honed through her background in information systems and business management, is a key asset in her role. Her in-house experience as a secondee to two different companies has provided her with firsthand knowledge of the internal business needs required for company initiatives to succeed. Marian has been instrumental in advising global clients on the developing field of AI. Clients seek her guidance due to her extensive understanding of, and experience with, the ethical use of AI and the developing legal compliance requirements, including data privacy and regulatory provisions, in connection with the design and implementation of innovative AI tools. Her work extends to helping clients identify and mitigate the potential risks associated with AI technologies.Marian counsels clients across a range of industries, including technology, finance, consumer goods and services, healthcare, insurance, media, and hospitality. She assists in designing and building their privacy programs, advising on compliance with U.S. and foreign privacy and data protection laws, such as the California Consumer Privacy Act (CCPA) and the EU’s General Data Protection Regulation (GDPR). Her work includes drafting internal policies, procedures, and guidelines for legal and non-legal audiences that incorporate privacy best practices and legal requirements in daily operations. One of Marian’s core strengths is her ability to comprehensively assess and improve privacy programs, and ensure they remain compliant with evolving privacy laws and regulations. She also drafts and negotiates contracts to protect clients’ data in key commercial agreements, advises on cross-border data transfer issues, and assists with completing multijurisdictional surveys of privacy obligations.In addition, Marian uses her privacy, data security, and AI implementation skills to provide pro bono counseling services to a variety of non-profit clients.Marian received her J.D. from University of Pennsylvania Law School in 2004 and her B.S. and M.B.A. from the State University of New York at Buffalo in 1999. Prior to attending law school, she worked as an application specialist for a small software company.

Marian A. Waldmann Agarwal

Tim is a Partner in the Palo Alto Office and a partner in the Emerging Companies and Venture Capital Group. He specializes in representing startup companies and venture capital firms in corporate and securities matters.In his practice, Tim advises startups from formation through acquisition or initial public offering in matters including venture capital financing, debt financing, equity incentive compensation, corporate governance and technology development (including licensing, joint development, distribution, and other technology transfer matters). He also represents venture capital firms, strategic corporate investors, and angel investors in their investments in startup companies.Tim specializes in modeling complex capital structures, financing scenarios and liquidity events, helping entrepreneurs and investors analyze possibilities and understand consequences of various transaction structures. Tim represents startups and investors in a variety of technology sectors, including consumer and enterprise software, financial services technologies, wearable computing, semiconductor design, healthcare technologies, consumer retail and transportation.In 2015, Tim founded the firm’s ScaleUp Speaker Series, an ongoing, ten session series for entrepreneurs on the legal issues they will face over the lifetimes of their startups.Tim is most proud of his work on behalf of at-risk Afghan allies in connection with Operation Allies Refuge and was recognized by Human Rights First as a Pro Bono Star.Prior to practicing law, Tim designed, programmed, and implemented software systems for clients in the financial services industry.

Timothy Harris

As chair of the biotechnology group and a member of the firm’s food and agriculture steering committee, Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of life science and agriculture. Meghan is passionate about working with cutting edge technologies at the frontier or science that impacts human health and global food security. She has significant experience in diverse technologies including antibodies, cell and gene therapies, diagnostics, and gene edited plants. Meghan manages a cross-technology team to service clients developing technology at the interface of life science and AI.Meghan represents clients ranging from large international pharmaceutical companies to midsized companies, startups, and universities. She has filed numerous Patent Term Extension applications to secure additional term for her clients’ patents which cover FDA approved products. In addition, Meghan has extensive experience addressing complex obviousness-double patenting and subject matter eligibility issues impacting her clients’ patent portfolios. Meghan also represents clients in both investor side and target side due diligence in deals from seed funding to initial public offerings.Meghan is a thought leader on intellectual property issues facing pharmaceutical, biotechnology, and agriculture companies and is sought after to speak at events and publish on these issues. Meghan has written numerous articles on the topics of patents vs. trade secrets, subject matter edibility, written description and enablement in life sciences. Meghan is editor of the MoFo Life Sciences Blog, where she directs content.Prior to law school, Meghan earned her PhD in biological chemistry based at the University of California, Los Angeles. Meghan’s Ph.D. work focused on analysis of protein-protein and protein-DNA interactions of site-specific recombinases. Meghan is the author of several scientific publications and has presented her research at international conferences.Meghan received her J.D. from the University of Southern California Law School and spent a year as a visiting student at Santa Clara University, where she focused on intellectual property.

ITRI Technology Spinout Showcase

20 Nov 2023 3:00 PM - 6:30 PM PST