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Seth D. Levy



Seth focuses his practice on intellectual property protection, licensing, strategy and disputes, particularly in life sciences and health care. He also handles a range of technology and clinical research transactions, and advises technology transfer programs at academic and health care institutions. Seth served as managing partner of the firm’s Los Angeles office from 2013–2017, and is co-chair of the firm’s Life Sciences practice.

What do you focus on?

My practice encompasses two main areas, leveraging my background in biological engineering and experience in business transactions.

Technology Transfer

I support tech transfer programs at universities, research institutes and academic medical centers. My experience includes patent procurement and portfolio management, coordinating complex research arrangements, negotiating commercial transactions involving IP, resolving related disputes and coordinating IP enforcement activities. I also advise on the development and expansion of tech transfer programs; the operation of incubators, accelerators and venture funds; and the revision of institutional IP policies to reflect contemporary tech transfer issues. I am intimately familiar with tech transfer operations and the unique environment in which these programs exist.

IP and Research Transactions

I represent academic and health care institutions in technology and research-driven transactions. I also work with companies in the private sector that do business with such institutions. My work in this area includes drafting and negotiating license agreements, research and development agreements, clinical trial agreements, consulting agreements and a range of other agreements to effectuate deals in the arenas of research, health care and intellectual property.

What do you see on the horizon?

Technology transfer offices at academic institutions are developing and deploying increasingly sophisticated programs and service offerings to enhance their institution’s research activities, de-risk their innovations, generate revenue, benefit the public and stimulate economic growth.

I believe technology transfer offices will become more active enforcers of their IP against infringers. I expect these institutions to increasingly leverage litigation to enhance their licensing efforts.

Presentations

  • “Collaborations During the Pandemic: Issues and Tips When Considering Partnerships,” BioLabs@NYULangone, Webinar, June 3, 2020
  • “Intellectual Property Issues in Clinical Trials Agreements," UCLA In-House Team, Los Angeles, CA, March 11, 2020
  • “Legal Issues for International Healthtech Companies," Cedars-Sinai Innovation Space, Los Angeles, CA, March 5, 2020
  • “Direct Enforcement of University IP—A Case Study of UC Santa Barbara’s Enforcement of Patent Rights Against Retailers,” AUTM 2019 Eastern Region Meeting, Raleigh, NC, October 3, 2019
  • “Direct Enforcement of University IP—A Case Study of UC Santa Barbara’s Enforcement of Patent Rights Against Retailers,” AUTM 2019 Western Region Meeting, Seattle, WA, September 20, 2019
  • “Advocacy 101,” It Gets Better Global Summit, New York, NY, June 27, 2019
  • “Corporate Perspectives on Sourcing Early-Stage Innovation,” USC Innovation Summit, Los Angeles, CA, March 27, 2019
  • “Current Trends in Sublicensing Academic IP,” University of California Fall IP Managers Systemwide Meeting, Santa Cruz, CA, November 6, 2018
  • “Advancing the University’s Mission Through the Monetization of Intellectual Property,” AUTM 2017 Eastern Region Meeting, Boston, MA, October 3, 2017
  • “Preparing Life Sciences Companies for Chinese Opportunities,” Office of Economic Development, Mayor Eric Garcetti, Los Angeles, CA, July 18, 2017
  • “Building an IP Strategy,” LA BioStart Legal Basics Program, Los Angeles, CA, July 14, 2017
  • “Introduction to Tech Transfer,” LA Bioscience Hub, Los Angeles, CA, June 16, 2017
  • “Navigating Through the Fog: Launching a Startup While Avoiding the Reefs,” UCSB Office of Technology & Industry Alliances, Santa Barbara, CA, May 11, 2017
  • “Legal Issues for Digital Health Companies,” Cedars-Sinai Medical Center Healthcare Accelerator, Los Angeles, CA, February 16, 2017
  • “Licensing IP from Universities,” Biocom Lunch & Learn at Lab Launch Inc., Monrovia, CA, January 19, 2017
  • “U.S. Patent Law Update,” The 2016 Chartered Institute of Patent Attorneys (CIPA) Life Science Conference, Brighton, UK, November 15, 2016
  • “Legal Issues in Supporting a New Innovation Center,” Higher Education Real Estate Lawyers Conference (HEREL) Conference, Manchester, NH, September 16, 2016
  • “U.S. Trends in Technology Transfer,” Farrer & Co. Roundtable Session, London, UK, October 2014
  •  “Biotech Claims Drafting,” The Chartered Institute of Patent Attorneys Seminar, London, UK, October 2014

Publications

  • “Intellectual Property and Publication Issues in Clinical Trial Agreements,” American Health Lawyers Association Member Briefing, April 2013
  • “Patent Protection in Medicine and Biotechnology: An Overview,” Journal of Health and Life Sciences Law, June 2011
  • “License Lessons: Don’t overlook key elements in patent-related licensing agreements,” GC California, Nov./Dec. 2009

Representative Experience

  • Represent The Regents of the University of California in a groundbreaking patent enforcement campaign to protect its rights in a revolutionary new generation of light bulb technology known as filament LED that was invented by a Nobel laureate-led team at UC Santa Barbara. As the accused products are made by foreign manufacturers, this campaign is brought against major U.S. retailers in parallel proceedings before the U.S. International Trade Commission and in the U.S. District Court for the Central District of California.
  • Assist Cedars-Sinai Medical Center, a nonprofit hospital and multi-specialty academic health science center, on a range of patent prosecution and tech transfer matters, including licensing and spin-off transactions, equity investments, research and technology development collaborations and IP enforcement. A recent matter involved the licensing and enforcement of patent rights on methods of diagnosing and treating irritable bowel syndrome (“IBS”), a chronic condition affecting more than 15% of the general population. Cedars-Sinai doctors invented groundbreaking treatments for IBS, and the NP team helped Cedars-Sinai patent these discoveries and license them to Salix Pharmaceuticals. After Actavis Laboratories FL, Inc. sought FDA approval to market a generic competitor drug, NP represented Cedars-Sinai in litigation with its licensees against the infringing generic competitor.
  • Represented CHA Biotech Co., Ltd., a Korean-based biotech company, in forming and managing a series of issues through a joint venture called Stem Cell & Regenerative Medicine, Inc., which was established with Ocata Therapeutics, Inc. (f/k/a Advanced Cell Technology, Inc.) before Ocata was acquired by Astellas. The joint venture focuses on the development of stem cell technologies.
  • Represent UC Santa Barbara in several iterations of negotiations with one of its biotech spinoffs. This work included restructuring UC Santa Barbara’s equity and license relationship with the company to address the complexities of the company’s sublicensing partnerships with numerous pharmaceutical companies.
  • Assist the California Institute of Technology (Caltech) with a range of patent prosecution matters.
  • Assist the University of Southern California (USC) with a range of patent prosecution matters.
  • Represented Alphazyme, a developer, manufacturer, and global distributor of molecular biology enzymes, in a sub-licensing agreement with Dyadic International, a global biotechnology company focused on improving and applying its proprietary C1 expression system to help drug developers and manufacturers bring biologic drugs to market. The sub-licensing agreement includes an equity stake, milestone payments, and royalties upon the commercialization of C1-expressed Alphazyme products.
  • Represented Serimmune, an immune intelligence company, in a collaboration agreement with Twist Bioscience Corporation to identify and evaluate SARS-CoV-2 therapeutic antibody candidates from Twist libraries using Serimmune's Serum Epitope Repertoire Analysis (SERA) platform, which maps the antigenic targets of antibody repertoires.
  • Represent Dignity Health, a California-based not-for-profit public-benefit corporation that operates hospitals and ancillary care facilities in several states, in patent prosecution matters as well as a range of other technology transfer issues, including revising its IP policy, supporting its material transfer agreement (MTA) contracting for its internal biobanks and other exchanges of research materials and representing it in multiple license negotiations for biotech and digital health technologies.
  • Represented Global Pediatric Surgical Technology and Education Project, Inc. (a/k/a GP STEP), a California-based nonprofit, in its collaboration with medical device manufacturer, SunMed, LLC, to distribute affordable surgical equipment to pediatric surgeons around the world.

Universities should consider ITC for IP protection

Tech Transfer Tactics | February 18, 2020

Intellectual Property partners Evan Langdon of Washington, DC, and Shawn Hansen and Seth Levy of Los Angeles co-wrote this article explaining how the U.S. International Trade Commission (ITC) can be a “powerfully effective venue” for patent protection. Evan, Shawn, and Seth are leading the NP team representing the University of California in an investigation pending at the ITC concerning LED lightbulb technology. Read the full article on techtransfercentral.com.

What the University of California case means for retailers and IP in the supply chain

TotalRetail | February 13, 2020

This article analyzes the potential for lasting implications to the global supply chain as a result of the University of California’s (UC) patent enforcement campaign against several retailers selling filament LED lightbulbs. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Central Coast tech firms, UCSB use litigation to protect patents

Pacific Coast Business Times | February 07, 2020

The article mentions Nixon Peabody’s ongoing representation of the Regents of the University of California in UC Santa Barbara’s patent enforcement matter, noting that a recent $1.1 billion verdict for the California Institute of Technology in another matter could bode well for UC Santa Barbara. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Think universities are making lots of money from inventions? Think again

The Hechinger Report | January 17, 2020

In this article about the ways universities succeed or fail in monetizing their intellectual property, Los Angeles Intellectual Property partner Seth Levy talks about NP’s patent enforcement work on behalf of the University of California.

University of California targets General Electric in campaign against patent infringement

Tech Transfer Central | January 08, 2020

This article quotes Los Angeles Intellectual Property partner Seth Levy discussing Nixon Peabody’s representation of the University of California, which has sued General Electric as part of its ongoing campaign to enforce its patents on LED lightbulb technology. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

UCSB adds GE to lawsuit defending LED patents

Pacific Coast Business Times | January 02, 2020

Los Angeles Intellectual Property partner Seth Levy is quoted in this story covering the latest developments in UC Santa Barbara’s patent enforcement campaign to protect its LED lightbulb technology, including the addition of General Electric as a defendant. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

ITC to Probe Amazon, Walmart, Others in LED Patent Case

Law360 | August 29, 2019

This article highlights recent developments in the University of California’s campaign to protect its rights related to filament LED technology developed at UC Santa Barbara. On Wednesday, the U.S. International Trade Commission opened an investigation in response to UC’s complaint, filed in July by the Nixon Peabody team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen.

Ikea, Amazon, and the billion-dollar war over light bulb design

Fast Company | August 02, 2019

This article highlights the University of California’s campaign to protect its rights related to filament LED technology developed at the university. An NP team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen is representing UC in this campaign.

It Gets Better CEO: For LGBTQ Professionals in Big Law, It Is Getting Better

Recorder/Law.com | June 28, 2019

This article, about the progress big law firms have made in support of the LGBTQ community, highlights Los Angeles Intellectual Property partner Seth Levy and his role as chairman and CEO of the It Gets better Project. The story also links to Nixon Peabody’s It Gets Better video.

‘It Gets Better’ CEO Seth Levy on being out in BigLaw

Law360 | June 20, 2019

Los Angeles Intellectual Property partner Seth Levy talks about his involvement with the It Gets Better Project and his experience as an openly gay man in the legal profession.

‘It Gets Better’ CEO Seth Levy on being out in BigLaw

Law360 | June 20, 2019

Los Angeles Intellectual Property partner Seth Levy talks about his involvement with the It Gets Better Project and his experience as an openly gay man in the legal profession. Click here to read the full article.

LGBT pride: Weighing the state of equality in the law

Law360 | May 31, 2018

San Francisco office managing partner Tom Gaynor and Los Angeles intellectual property partner Seth Levy are quoted in this story on the strides LGBT attorneys have made in the legal industry.

Hop on the Justice Bus: Next stop? Citizenship

NPR | August 26, 2017

Los Angeles office managing partner Seth Levy, partner Justin Thompson and associate Jessica Walker are quoted in this article about the Los Angeles office’s pro bono work with OneJustice’s Justice Bus to help low-income immigrant Green Card holders seeking U.S. citizenship.

Contact

Seth D. Levy

Partner
Co-chair, Life Sciences Practice

Los Angeles

Phone: 213-629-6161


Fax: 877-644-1571

University of Southern California Law School, J.D.

Cornell University, B.S., Agricultural & Biological Engineering, cum laude

California

District of Columbia

Idaho

U.S. Court of Appeals, Ninth Circuit

U.S. District Court, Central District of California

U.S. Patent and Trademark Office

  • Managing Intellectual Property—Recognized as an “IP Star” (2020)
  • IAM Strategy 300—Ranked as one of the world’s leading IP strategists for licensing and technology transfer (2019)
  • The Best Lawyers in America© 2020 in the field of Biotechnology and Life Sciences Practice
  • Chambers USA: America’s Leading Lawyers for Business for Life Sciences: Corporate/Commercial in California (2009–present)
  • IAM Patent 1000—Ranked as a leading California lawyer for transactions and prosecution (2014–2019)
  • The Legal 500 United States for Healthcare: Life Sciences (2013)
  • Daily Journal’s “25 Leading Biotech Lawyers in California” (2011)
  • Daily Journal’s “Top 20 Under 40” lawyers in California (2011)
  • “Best LGBT Lawyers Under 40,” National LGBT Bar Association (2010)
  • Inaugural recipient, Paul Davis Memorial Award for outstanding leadership in pro bono work, University of Southern California Law School (2004)
  • Jack Berman Award of Achievement, recognizing a young lawyer who has provided outstanding service to the legal profession and public, as well as dedication to issues of concern to new and young lawyers, California State Bar (2005)
  • Wiley W. Manuel Award for Pro Bono Legal Services, four-time recipient, California State Bar
  • Los Angeles Advisory Board, Biocom
  • Board of Directors, OneJustice
  • Board of Directors, It Gets Better Project
  • Member, Science, Technology and Research Advisory Board, California Technology Council
  • Past Chair, Life Sciences Practice Group, American Health Lawyers Association
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