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Richard G. Gervase, Jr.

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Richard Gervase heads Mintz’s Royalty Monetization practice and is a leader in the field.  Richard began his career in the late 1980s as a mergers and acquisitions and securities lawyer at Brown & Wood in New York City, where he focused on the biotechnology sector. He has extensive experience structuring and negotiating a wide variety of transactions in the life sciences industry, including royalty monetization transactions, pharmaceutical license and collaboration agreements, stock and asset acquisitions, strategic alliances, joint ventures, sponsored research agreements, research grant funding agreements involving not-for-profits, materials transfer agreements, software licenses, foundry services agreements and other agreements involving technology transfer and licensing.  Since 2002, Richard has represented both investors and royalty holders in the structure, negotiation, and valuation of a wide variety of royalty stream monetization transactions.  Over the past 17 years, Richard has evaluated royalty streams involving more than 40 pharmaceutical and biological products for potential monetization, including:

Advate ®

Neulasta ®

Kadcyla ®

Estorra ®

Cimzia ®

Cubicin ®

Rotarix ®

PegIntron ®

Letairis ®

Fovista ®

Gardasil®

Actemra®

TOBI®

Remicade®

Movantik®

Mylotarg®

Eligard®

Avastin®

Lexiva®

Retisert®

Revlimid®

Iclusig®

Erbitux®

Cervarix®

Zenepax®

Adenoscan®

Neupogen®

Lucentis®

Fosamax®

Enbrel®

Daptomycin®

Synagis®

Raptiva®

Macugen®

Brigatinib®

Herceptin®

Amphastar®

Tysabri®

Restasis®

Xolair®

 

In addition to traditional sales of royalty streams, Richard also has significant experience with alternative royalty monetization structures, including secured debt and convertible debt financings, synthetic royalties, revenue interest assignments, late-stage clinical trial funding agreements, and other healthcare related financings.

In addition to his transactional practice, Richard also advises clients on all aspects of intellectual property litigation, including patent, copyright, trademark, and trade secret litigation and related antitrust and unfair competition matters. He has represented numerous Fortune 100 companies in intellectual property infringement cases nationwide. A registered patent attorney, Richard also handles post-grant proceedings before the USPTO and the Patent Trial and Appeal Board, including ex-parte re-examinations, inter partes reviews (IPRs), covered business method (CBM) reviews, and post-grant reviews (PGRs).  He also counsels companies in the development, protection, and licensing of their intellectual property portfolios with an emphasis on value creation.  Richard is a Member of Mintz's Opinion Committee.

Prior to joining Mintz, Richard was a senior patent litigation attorney at the intellectual property law firm of Fish & Neave in New York City.

He completed executive mediation training at Harvard Law School’s Program on Negotiation. He was Senior Articles Editor for the Rutgers Law Journal.

Education

  • Rutgers University (JD)
  • Rutgers University (BSEE)

Experience

Royalty Financing Transactions

  • Represented TPG Sixth Street Partners in a $300 million synthetic royalty debt financing by Therapeutics MD, am innovative pharmaceutical company committed to advancing the health of women and championing awareness of their healthcare issues. The financing is related to sales of IMVEXXY, BIJUVA and ANNOVERA.
  • Represented TPG Sixth Street Partners in a $175 million Clinical Trial Financing for Clovis Oncocolgy. The proceeds will be used to fund the ATHENA first-line maintenance clinical trial for Rubraca’s use in treating ovarian cancer
  • Represented ImmunoGen, Inc. in a royalty financing transaction raising $65 million involving the sale of ImmunoGen’s residual worldwide royalties based on sales of KADCYLA® to an investment fund managed by the Ontario Municipal Employees Retirement System (OMERS). 
  • Represented TPG Sixth Street Partners in a $150 million debt financing for Caris Life Sciences, a molecular profiling company focused on precision medicine, in the form of senior secured debt and convertible notes.
  • Represented one of the key inventors in the sale by Boston Children’s Hospital of both the Hospital’s and the inventor’s share of their respective royalty interests in Vonvendi to an affiliate of Barings Alternative Investments for over $60 million.  
  • Represented Albireo Pharma, Inc. and its Swedish subsidiary Elobix AB in the sale to HealthCare Royalty Partners for $45 million (up to $60 million if a certain sales milestone is met) of Elobix’s right to receive royalties and certain milestones for sales of elobixibat in Japan, up to a certain threshold. 
  • Represented CLS Pharmaceuticals in the sale of its rights to future royalties with respect to SHP-640, a combination broad spectrum antiseptic and corticosteroid Phase III asset being developed by Shire for the treatment of infectious conjunctivitis to a prominent venture fund for an undisclosed amount. 
  • Represented TPG Sixth Street Partners in a $150 million synthetic royalty debt financing by Ironwood Pharmaceuticals relating to sales of Linzess (linaclotide).
  • Represented TPG Special Situations Partners in a $250 million debt financing by Nektar Therapeutics backed by various royalty streams held by Nektar. 
  • Represented ARIAD, Inc. in a synthetic royalty financing transaction raising $200 million in non-dilutive financing backed by a portion of ARIAD’s revenue interest on sales of Iclusig® to an investment fund managed by PDL BioPharma, Inc. 
  • Represented ImmunoGen, Inc. in a royalty financing transaction raising $200 million in non-dilutive financing involving the sale of a portion of ImmunoGen’s royalties based on sales of KADCYLA® to TPG Special Situation Partners. 
  • Represented Intarcia Therapeutics in a novel $225 million synthetic royalty financing with equity conversion option at a $5.5 billion valuation based on future global net sales of its diabetes pump product candidate ITCA 650.  
  • Represented Vertex Pharmaceuticals in its $155 million debt financing secured by future milestones associated with the filing, approval, and launch of its hepatitis C (HCV) protease inhibitor drug candidate telaprevir in Europe to an affiliate of Olmsted Park.  
  • Represented Vertex Pharmaceuticals in the sale of its rights to an aggregate of $95 million in potential future milestones tied only to the launch of telaprevir in the European Union to an affiliate of Olmsted Park.
  • Represented Drug Royalty Corporation in the purchase of 25% of Enzon Pharmaceuticals, Inc.’s worldwide royalty interest in PEG-INTRON (peginterferon alpha-2b) for $92 million (plus an additional $15 million if certain royalty recognition levels be met).
  • Represented Drug Royalty Corporation in the acquisition of a portion of ISIS Pharmaceuticals, Inc.’s rights to receive royalties generated by Macugen (pegaptanib sodium injection) for $24 million. 
  • Represented Drug Royalty Corporation in multiple transactions involving the acquisition of royalties generated by blockbuster drug Remicade.

License and Collaboration Agreements

  • Represented Grünenthal GmbH in the acquisition of exclusive commercial rights for the dermal pain patch Qutenza (8% capsaicin) in the US, Latin America, Asia and Australia from Acorda Therapeutics, Inc. 
  • Represented ARIAD Pharmaceuticals, Inc. in a license and collaboration agreement with Incyte Corporation whereby ARIAD granted to Incyte an exclusive license to develop and commercialize ARIAD’s kinase inhibitor Iclusig (ponatinib) in Europe.
  • Represented LAM Therapeutics, Inc. in an exclusive license and collaboration agreement with an undisclosed party for the worldwide development of certain Hsp90 inhibitors.
  • Represented Grünenthal GmbH in the acquisition of exclusive commercial rights for the dermal pain patch Qutenza (8% capsaicin) in Europe, the Middle East, and Africa from Astellas Pharma Europe Ltd.
  • Represented LAM Therapeutics, Inc. in an exclusive license and collaboration agreement with Synta Pharmaceuticals Corp. for the worldwide development and commercialization of certain IL-12 and IL-23 inhibitors.
  • Represented LAM Therapeutics, Inc. in a Master Clinical Supply and Development Agreement with F. Hoffmann-La Roche Ltd. for the joint development of a LAM proprietary compound.
  • Represented Altus Pharmaceuticals Inc. in a development, commercialization and marketing agreement with Dr. Falk Pharma GmbH for the development of ALTU-135 (TheraCLEC) in Europe, the Soviet Union, Israel and Egypt.
  • Represented Altus Pharmaceuticals Inc. in an exclusive license and collaboration agreement with Cyctic Fibrosis Foundation Therapeutics, Inc. for the development of ALTU-135 (TheraCLEC) and certain other derivatives in North America.
  • Represented OSI Pharmaceuticals, Inc. in a global Co-Development and Commercialization Agreement with Genentech Inc. and Roche for the development and commercialization of OSI’s lead cancer drug OSI-774 (Tarceva).  Under the agreement, Genentech and OSI employ an equal cost and profit sharing arrangement for commercialization in the United States, while Roche pays royalties on net sales to OSI in markets outside of the United States. The overall costs of the tripartite development program are split equally among the three parties.

M&A Transactions

  • Represented ARIAD Pharmaceuticals, Inc. in the sale of its European operations to Incyte Corporation and a corresponding license agreement for Incyte to exclusively license Iclusig® in Europe and other select countries.
  • Represented Dainippon Sumitomo Pharma Co. Ltd. in its acquisition of Sepracor Inc. for $2.55 billion.
  • Represented Humedica Inc. in its acquisition by UnitedHealth Group Inc.
  • Represented Qiagen NV in its acquisition of Digene Corp. for $1.6 billion.
  • Represented Vertex Pharmaceuticals Incorporated in its acquisition of ViroChem Pharma, Inc. for $400 million.
  • Represented Myriad Genetics, Inc. in its acquisition of Rules-Based Medicine, Inc. for $80 million.
  • Represented AT&T Corp. as special patent counsel in connection with its groundbreaking trivestiture/spin-off of NCR Corporation and Lucent Technologies.

Securities Transactions

  • Represented Leerink Swann and Citigroup in the initial public offering of Acceleron Pharma Inc.
  • Represented Lazard Capital Markets in the initial public offering of GW Pharmaceuticals.
  • Represented BofA Merrill Lynch in the public offering of Puma Biotechnology.
  • Represented ARIAD Pharmaceuticals in a public offering of $258 million of common stock.
  • Represented BofA Merrill Lynch and Leerink Swann in the public offering of $65 million in common stock of Achillion Pharmaceuticals.
  • Represented Goldman Sachs, Credit Suisse & Co, and Piper Jaffray & Co. in the public offering of $250 million in common stock of ViroPharma Incorporated.

Litigation

  • Siemens Medical Solutions, Inc. v. Humedica, Inc. (D. Del) – Defended Humedica, Inc., a subsidiary of UnitedHealth Group and an affiliate of Optum Inc., in a patent infringement suit alleging infringement of four patents directed to data mining electronic medical records, disease modeling, and use of ontologies for data extraction.
  • The Brita Products Company v. Seventh Generation, Inc. (N.D. Cal.) – Represented Seventh Generation in a declaratory judgment action brought by plaintiff Brita seeking to invalidate two Seventh Generation patents directed to refillable water bottles containing water filtration devices.
  • Krauser v. BioHorizons, Inc. (S.D. Fla.) – Defended BioHorizons in a dispute over ownership and inventorship of technology and patents directed to dental implants. Disposed of on summary judgment and BioHorizons was awarded its attorney’s fees.
  • Round Rock Research LLC v. HTC Corp. (D. Del.) – Defended HTC in a patent infringement suit alleging infringement of five patents directed to 3G and 4G wireless chipsets and smartphone technologies.
  • Rates Technology Inc. v. Nortel Networks Corp. (E.D.N.Y.) – Defended Nortel in a patent infringement lawsuit involving three patents directed to computer telephony switching infrastructure. Disposed of on a motion to dismiss affirmed by the Federal Circuit.
  • Cardiofocus, Inc. v. Lumenis, Inc. (D. Mass.) – Defended Lumenis in a patent infringement case involving three patents directed to medical lasers.
  • Altus Biologics Inc. v. Altus Medical, Inc. (S.D.N.Y.) – Represented Altus Biologics in a trademark infringement suit involving the company’s registered trademark Altus.
  • DePuy Spine Inc. et al. v. Alphatec Spine, Inc. (D. Mass.) – Defended Alphatec in a patent infringement lawsuit involving a DePuy patent directed to polyaxial pedicle screws.
  • Louis Vuitton Malletier v. Dooney & Bourke, Inc. (S.D.N.Y) – Represented Louis Vuitton in a trademark infringement lawsuit involving Vuitton’s colorful and hot-selling Murakami handbags.
  • Richter Gedeon Vegyeszeti Gyar RT v. Gyma Laboratories, Andrx Corp., et al. (E.D.N.Y.) – Represented Richter Gedeon in a patent infringement lawsuit involving infringement of five Richter Gedeon patents directed to crystallised polymorph versions of famotidine.
  • Motorola, Inc. v. Rockwell International Corporation (D. Del.) – Represented plaintiff Motorola in patent infringement suit involving 11 patents relating to trellis coded modulation and other telecommunication technologies used in computer modem chipsets. Case involved complex antitrust and misuse defenses stemming from the standard-setting process.
  • Duplitronics Inc. v. Time Warner Inc. (N.D. Ill.) – Defended Time Warner in a patent lawsuit alleging infringement of three Duplitronics patents directed to compact discs and memory storage technologies.
  • Altera v. Xilinx/Xilinx v. Altera (N.D. Cal.) – Represented Altera in two patent infringement lawsuits (one as a plaintiff and the other as a defendant) involving the parties’ respective patents directed to computer chip architecture and programmable logic devices.
  • Lucent Technologies Inc. v. Periphonics Corp. (D. Del.) – Represented plaintiff Lucent in patent infringement suit involving six patents relating to computer telephony, voice recognition, interactive voice response, and voice messaging system technologies.
  • Lucent Technologies Inc. v. Microchip Technology Inc. (D. Del.) – Represented plaintiff Lucent in patent infringement suit involving five patents relating to photolithography and other technologies used in the fabrication and architecture of high-performance computer chips.
  • Motorola, Inc. v. PC Tel, Inc. (D. Del.) – Represented plaintiff Motorola in patent infringement suit involving 10 patents relating to various modem technologies.
  • NCR Corporation v. Netscape Communications Inc. (D. Del.) – Represented plaintiff NCR in patent infringement suit involving 10 NCR patents directed to various Internet-related technologies including certain client-server architecture, database management, and encryption technologies.
  • Cochlear Corp. v. Advanced Bionics (N.D. Cal.) – Defended Advanced Bionics (a subsidiary of Boston Scientific) in a patent infringement lawsuit involving two patents directed to cochlear implant technology.
  • Gillette Canada v. Thornton Int’l. (D. Conn.) – Represented plaintiff Gillette in a patent infringement lawsuit alleging infringement of two Gillette patents directed to dental floss.

Involvement

  • Lecturer and Advisor to the Harvard-MIT Health Sciences and Technology (HST) Program at the MIT Institute for Medical Engineering and Science
  • Lecturer and Advisor to the Runway Postdoctoral Program at the Joan and Irwin Jacobs Technion-Cornell Innovation Institute (TCII)
  • Biotech Industry Organization (BIO), member and speaker
  • Intellectual Property Owners Association (IPO), Software and Business Methods Committee, Post-Grant Committee
  • American Intellectual Property Law Association (AIPLA), Patent Litigation Committee
  • New York Intellectual Property Law Association (NYIPLA), Patent Litigation Committee
  • American Bar Association, Patent Litigation Committee (ABA), Member, Alice v. CLS ABA Joint Task Force
  • Federal Circuit Bar Association, Amicus Committee
  • Licensing Executive Society (LES), member and speaker
  • Board of Directors, Amateur Ski Club of New York (Waitsfield, Vt.)

Viewpoints

Viewpoint

Another Shoe Drops in the Qualcomm Patent Licensing Saga

May 24, 2019 | Blog | By Michael Renaud, Bruce Sokler, Rich Gervase, Harold Laidlaw

Just when observers thought Qualcomm could celebrate its successful litigation with Apple another decision has come down which could have major implications for Qualcomm’s business going forward.

Supreme Court Makes it Harder for Willful Infringers to Escape Punishment

June 15, 2016 | Blog | By Michael Renaud, Rich Gervase, Sandra Badin

The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.

Supreme Court Makes It Harder for Willful Infringers to Escape Punishment

June 14, 2016 | Alert | By Michael Renaud, Rich Gervase, James Wodarski, Sandra Badin

The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.
On Wednesday, President Obama signed into law the groundbreaking Defend Trade Secrets Act, which for the first time creates a federal civil remedy for trade secret misappropriation and provides uniformity — and hopefully predictability — to what has been a patchwork body of law applied disparately among the states.
On Wednesday, President Obama signed into law the groundbreaking Defend Trade Secrets Act (DTSA)1, which for the first time creates a federal civil remedy for trade secret misappropriation and provides uniformity (and hopefully predictability) to what has, until this point, been a patchwork body of law applied disparately among the states.
On December 17, 2015, the Federal Circuit issued a precedential decision affirming a determination by the Patent Trial and Appeal Board (“PTAB”) that patent claims related to methods of treating elevated homocysteine levels were invalid as obvious.

Evolving SEP Jurisprudence and RAND Determinations in Microsoft v. Motorola

August 21, 2015 | Blog | By Rich Gervase, Sandra Badin, Michael Renaud

Last month, the Ninth Circuit Court of Appeals issued a pivotal decision in Microsoft v. Motorola regarding the licensing of standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.

Ninth Circuit Upholds Judge Robart’s RAND Determinations in Microsoft v. Motorola

August 14, 2015 | Alert | By Rich Gervase, Bruce Sokler, Sandra Badin, Michael Renaud

Late last month, the Ninth Circuit Court of Appeals issued its much-anticipated decision in Microsoft v. Motorola, a breach of contract action brought by Microsoft alleging that Motorola violated its commitment to license its standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.

EU Court Clarifies the Conditions Under Which Assertion of Standard-Essential Patents May Constitute Abuse of Market Dominance

July 23, 2015 | Alert | By Sandra Badin, Bruce Sokler, Michael Renaud, Rich Gervase

Last week, in response to a request for a preliminary ruling by a German court hearing a patent infringement action brought by Huawei against ZTE, the Court of Justice of the European Union (ECJ) took up the question of whether the assertion of patents that have been declared essential to the practice of a standard (standard-essential patents or SEPs) may run afoul of Article 102 of the Treaty on the Functioning of the European Union (TFEU).

Supreme Court Upholds Brulotte Rule Prohibiting Post-Expiration Patent Royalties

June 23, 2015 | Alert | By Bruce Sokler, Sandra Badin, Rich Gervase

On June 22, 2015, the Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, upholding the rule, first announced in Brulotte v. Thys Co., 379 U. S. 29 (1964), that an agreement allowing a patent owner to collect royalty payments after a patent’s expiration is unlawful per se.

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