From Distress to Success: Mastering the Enhanced IP Due Diligence Needed to Safely Acquire Distressed yet Promising Life Sciences IP Assets

November 29, 2023 2:00pm

Mercedes Meyer
Banner Witcoff

Julia Frost-Davis
Greenberg Traurig LLP

Kristin K. Going
McDermott, Will & Emery LLP

  • Discovering the critical buy side/sell side considerations
  • Understanding the scope of intellectual property assets associated with the distressed company, including patents, trademarks, copyrights, trade secrets, and proprietary technology
    • Considering whether “blocking patents” or very broad claims should kill the deal
    • If the patent is likely invalid, learning how to assess litigation risk and cost
  • Rethinking patent continuation strategies in light of Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023)
  • Understanding how the scope of the IP assists in evaluating the market opportunities
    • Strategies for broad functional claims versus genus claims
    • Dealing with questionable support in the specification
  • Exploring how to value the portfolio of alternative claims (e.g., MPF, Jepssen) and secondary patents