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Stanford and MoFo Series: IP, Licensing, and Venture Strategies

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Join SBPA and Morrison Foerster for a Three-Week Miniseries on IP, Licensing, and Venture Strategy. SBPA is excited to partner...

Join SBPA and Morrison Foerster for a Three-Week Miniseries on IP, Licensing, and Venture Strategy. SBPA is excited to partner with Morrison Foerster for a three-part miniseries designed to provide a practical foundation in patent law, intellectual property (IP) strategy, licensing, and corporate transactions. This series will be led by attorneys from MoFo’s Patent, Technology Transactions, and Corporate Groups.Through practical insights into patent strategy, commercialization pathways, and venture financing, these sessions seek to help researchers and innovators navigate the legal and business aspects of bringing new technologies to market. Sessions will be interactive, offering opportunities for discussion.This program is open to all Stanford students and faculty.Session TopicsSession 1: IP 101 – Introduction to key IP concepts, including copyright, trademarks, trade secrets, and patents, with a deeper dive into patents and trade secrets.​​​​Tuesday, May 13, 3:00 p.m. – 4:00 p.m. PDTVirtualSpeakers:<ul><li>Felicia Burns</li><li>Kate You</li></ul>Session 2: IP Licensing and Commercial Transactions – Key considerations for IP licensing and commercial agreements.Tuesday, May 20, 3:00 p.m. – 4:00 p.m. PDTVirtualSpeakers:<ul><li>Matt Ferry</li><li>Daisuke Gatanaga</li></ul>Session 3: Venture Capital Playbook – Corporate formation, fundraising strategies, and due diligence essentials.Tuesday, June 3, 4:30 p.m. – 5:30 p.m. PDTIn person, followed by a happy hour and office hours*SOM Edwards Building R133K- Yellowstone on the Medicine School campusSpeakers:<ul><li>Jim Ryan</li><li>Katherine Suzuki</li></ul>* For office hours, please complete our registration form to reserve a slot.﻿Upon registering, you can use the Zoom link provided in your confirmation email to join the first two virtual sessions. If you have opted for the in-person session on June 3, you’ll receive a separate confirmation email with the venue details.<hr>

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Anita Choi has decades of experience providing strategic advice to companies and investors in the <a href="/capabilities/life-sciences-healthcare" target="_self" dir="ltr">Life Sciences</a> and <a href="/capabilities/food-agriculture" target="_self">Food + Agriculture</a> industries. She has helped start-up companies build IP portfolios around their core technologies, and counseled them on issues related to patents versus trade secrets. She has worked with larger, more established companies to manage global patent portfolios in a way that integrates IP with their business models. Combining her legal and business expertise enables her to navigate complex challenges that require complex solutions hence why she is so often called upon by clients to help with assessing, building and strengthening patent portfolios.  She has also counseled investors in IP due diligence, identifying critical issues that may affect valuation and risk assessment in deals.Anita is part of the <a href="/life-sciences-healthcare-leadership" target="_self">Life Sciences + Healthcare Leadership Team</a>, as well as the Food + Agriculture Leadership Team within the firm. She co-leads the firm’s Chemistry Subgroup within the patent practice, which covers both the Pharmaceuticals and Materials sector within the chemistry space. She also co-leads the firm’s Food + Agriculture patent practice. Anita’s clients praise her ability to quickly gain a deep understanding of their technology and business, which allows her to think critically, creatively and practically in patent portfolio management.Anita is recognized as a key lawyer by The Legal 500 US for patent prosecution. She received her J.D. from the University of Pennsylvania Law School where she graduated magna cum laude with a degree in Chemistry and was named to the Order of the Coif. During law school, Anita also completed her M.B.A. at the Wharton School of Business.Anita is co-editor of our <a href="https://lifesciences.mofo.com/" target="_blank" dir="ltr">MoFo Life Sciences Blog</a>.Life SciencesAnita gained a solid technical background across disciplines during her time studying at the California Institute of Technology (CalTech), where she received her Bachelor of Science with honors. She spent several years working at Pfizer, developing small molecule compounds for use in oncology therapies. She has performed research at CalTech involving unnatural amino acids, and at MIT involving fluorescent zinc sensors, both for use in developing neuroscience applications.Anita has counseled clients in a wide variety of life science technologies, including small-molecule pharmaceuticals, cannabinoids, nutraceuticals, pharmaceutical and cosmetic uses, pharmaceutical formulations, medical devices, diagnostics, and digital health.Food and AgTechAnita has advised businesses in developing IP strategies for soil and crop technologies, sustainable farming, alternative protein sources, fermentation technologies, extraction technologies, new categories of food and beverage products, and food packaging.The breadth of technologies that Anita works with also enables her to provide IP advice at the intersection of multiple technical disciplines. For example, Anita’s practice is also well positioned at the convergence of data analytics in the Life Sciences and Agriculture industries.ChemistryAnita also has technical expertise in chemistry outside of Life Sciences, such as in the Materials space, including Cleantech. She has developed IP strategies for biobased materials, polymer chemistry, composite materials, catalyst-based technologies, industrial processing, batteries, and carbon capture technologies.IP Due DiligenceAnita is skillful with investor-side and company-side patent due diligence. She supports many of the firm’s corporate deals, advising on ownership and patent portfolio risks and conducting patentability and freedom-to-operate assessments. She also supports her own clients undergoing IP due diligence by investors.IP Litigation SupportAnita also works closely with the IP Litigation Group to formulate strategies for infringement contentions, validity/invalidity contentions, and claim construction positions. She actively supports the patent litigators in pre-litigation diligence matters to evaluate the strength of patents and patent portfolios.Pro BonoAnita has an active pro bono practice and has been awarded the State Bar of California's Wiley W. Manuel Award for Pro Bono Legal Services for many consecutive years. She regularly represents families seeking legal guardianship. She also assists numerous non-profit organizations in developing and securing patent protection for their core technologies.

Anita Choi

Partner

Dr. Felicia Burns focuses on patent preparation and prosecution, with an emphasis on small molecules and pharmaceuticals.Felicia has experience in both organic chemistry and microbiology and assists with a wide range of clients, including small entities and larger companies in the biotech, chemistry, and pharmaceutical spaces. She conducted her doctoral studies in chemistry at Syracuse University, Syracuse, NY. Her doctoral research focused on the design and synthesis of small molecule bacterial inhibitors, and the exploration of their protein targets.Felicia received her B.A. in chemistry, with an emphasis in analytical chemistry, from the College of Saint Benedict, St. Joseph, MN, where her research focus was the development of novel methods of detecting markers of oxidative stress.

Felicia Burns

Scientific Analyst

Dr. Kate You is a member of the firm’s Patent Group and focuses her practice on patent prosecution and counseling, including domestic and international patent preparation and prosecution, and litigation support. Dr. You’s experience includes diagnostic assays and she has expertise in neurology, microbiology, and immunology.Prior to joining the firm, Dr. Kate You was postdoctoral fellow at Stanford University, School of Medicine, Department of Neurology, where she worked on multiple clinical research projects, established several international and domestic collaborations, and developed a novel diagnostic assay for an autoimmune neurological disease. During her Ph.D. study at University of Alabama at Birmingham in the department of microbiology, Dr. You conducted two research projects on basic immunology, both published in peer-review journals. Dr. You received the Hiramoto Travel Award and was invited to orally present her findings at three international conferences.Dr. You was co-president of the Chinese Life-Science Postdocs and Students at Stanford for a year and an executive council member at the Chinese American BioPharmaceutical Society (CABS).Dr. You earned her J.D. at University of California, in Los Angeles, CA, her  Ph.D. in microbiology/immunology from the University of Alabama in Birmingham, AL and her B.S. in biology from the Fudan University in Shanghai, China.Dr. You is admitted in California and is fluent in Mandarin.

Yuying (Kate) You

Associate

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

Daisuke Gatanaga is an associate in the Technology Transactions Group of Morrison Foerster’s Palo Alto office.Daisuke earned his J.D. from Stanford Law School in 2017, where he served as an Executive Editor for the Stanford Technology Law Review. He received a B.S. in Chemistry, summa cum laude and Phi Beta Kappa, from Yale University and holds master’s degrees from both Stanford University and Yale University.Daisuke has native proficiency in both English and Japanese. He is admitted to practice law in the state of California.Daisuke has been recognized by The Best Lawyers in Japan in its “Ones to Watch” category for Patent Practice.

Daisuke Gatanaga

Jim Ryan is a partner in Morrison Foerster's Transactions Department. His practice focuses on domestic and cross-border corporate and securities matters, including venture capital and private equity financings, mergers and acquisitions, securities compliance, and corporate governance.Jim represents entrepreneurs, startups and emerging companies as outside general counsel, venture capital and private equity investors, and financial and strategic acquirers across the technology, media, telecommunications, and life sciences industries. His clients operate in a variety of sectors including machine learning and artificial intelligence, robotics, autonomous vehicles, cybersecurity, data analytics, fintech, e-commerce, gaming, life sciences, and medical devices.Jim earned his J.D. from the Santa Clara University School of Law, where he was a comments editor for the Santa Clara Law Review and was published on the topic of cloud computing regulation. He received his B.A. in Economics with a minor in Information Systems and Technology Management from the University of California, Santa Cruz.

Jim Ryan

Katherine Suzuki is a corporate associate in the firm's Palo Alto office.Katherine’s practice focuses on corporate and securities matters, including venture capital and private equity financings, mergers and acquisitions, and corporate governance.Prior to joining the firm as an associate, Katherine served in the United States House of Representatives as a Legislative Fellow. She also served as an Honors Program Legal Intern with the United States Securities and Exchange Commission.Katherine earned her J.D. from the University of California, Berkeley School of Law, where she earned a Certificate of Specialization in Business Law. While in law school, she served as Executive Editor for the Asian American Law Journal and participated in the New Business Practicum, which advises startups in the Bay Area.Katherine received her B.A., with distinction, from the University of California, Berkeley, where she was elected to Phi Beta Kappa.

Stanford and MoFo Series: IP, Licensing, and Venture Strategies

13 May 2025 - 27 May 2025