Seth D. Levy

What do you focus on?

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 and life sciences companies in technology and research-driven transactions. I also work with companies in the private sector that do business with these institutions. My work in this area includes drafting and negotiating license agreements, joint research and development agreements, clinical trial agreements, sponsored research agreements, consulting agreements, and a range of other corporate transactions to effectuate deals in the arenas of research, health care, and IP.

Outside General Counsel

I serve as outside general counsel to emerging growth and mid-stage life sciences companies, supporting their businesses in this complex ecosystem. Coordinating with other specialists at the firm when needed, I guide our clients’ fundraising efforts, intellectual property strategy, partnering deals, board governance matters, and their full range of operational issues.

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.

In addition, the COVID-19 pandemic will continue to drive and inform research, development and commercialization efforts throughout the life sciences sector. Practical and efficient deal-making and creative collaborations will be key to addressing worldwide public health issues and to otherwise meet the unique needs of this moment, whether through new treatments, vaccines and medical devices or other technologies such as telemedicine and digital health innovations.

Presentations

• “Life Sciences Collaborations During the Pandemic,” USC Stevens Center for Innovation and USC Chapter of the National Academy of Inventors, Webinar, July 29, 2020
• “Startup Investing in a Changing Landscape,” Sustainable Change Alliance, Webinar, July 15, 2020
• “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, and 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, August 9, 2018, February 1, 2019, and July 26, 2019
• “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

Representative Experience

Technology Transfer

• 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. The campaign includes litigation before the U.S. International Trade Commission, the U.S. District Courts for the Central District of California and Eastern District of New York, and the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office.
• Represent 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 protecting the IP rights in a UV light therapy that combats secondary infections associated with COVID-19 and supporting licensing and third-party research contracting issues to develop a prototype and bring the technology to market.
• Represent the Eye-Bank for Sight Restoration, a NYC-based tissue bank, in establishing research and license agreements with the Icahn School of Medicine at Mt. Sinai in order for Mt. Sinai researchers to train Eye-Bank personnel to isolate retinal pigment epithelial cells from donated tissue for use in research and other purposes.
• 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.
• 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.
• Represent the California Institute of Technology (Caltech) with a range of patent prosecution matters.
• Represent the University of Southern California (USC) with a range of patent prosecution and tech transfer matters.
• Represented Brown University in revising the template agreements for its tech transfer office.

IP and Research Transactions and Outside General Counsel

• 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 focused on the development of stem cell technologies.
• Represent Emmaus Medical, Inc., a specialty pharma company focused on rare and orphan diseases, such as sickle cell disease, for which the company’s Endari™ therapeutic has been approved, in clinical research matters, international pharmaceutical manufacturing, distribution and compassionate use transactions, and a series of research and licensing transactions with The Lundquist Institute.
• Serve as outside general counsel to Serimmune Inc., an immune intelligence company developing new approaches for preventing, diagnosing, and treating a range of diseases. Recent matters included a research collaboration with Atreca, using Serimmune’s Serum Epitope Repertoire Analysis (SERA) platform to identify the targets of Atreca’s anti-cancer antibodies, and a collaboration with Twist Bioscience to identify and evaluate SARS-CoV-2 therapeutic antibody candidates from Twist’s libraries using Serimmune's SERA platform.
• Represent Codagenix, Inc., a clinical-stage biotechnology company developing prophylactic vaccines and oncolytic virus therapies, in a range of research and licensing transactions with both private-sector and government agencies, for its human and animal health programs. A recent matter involved the company’s collaboration with the Serum Institute of India to rapidly co-develop a live-attenuated COVID-19 vaccine.
• Represent Iotron Industries, a Canadian nuclear technology company, in various matters pertaining to its manufacture of copper-67 for radiopharmaceutical use, including various license and research transactions with Argonne National Laboratory.
• Represent the NARBHA Institute (f/k/a Northern Arizona Regional Behavioral Health Authority, Inc.), a nonprofit organization designated by the Arizona Department of Health Services to plan, implement, fund, monitor, and administer publicly funded comprehensive behavioral health services in Northern Arizona, in establishing a collaboration with TGen North to advance human health through the TGen One Health Collaborative—an initiative that recognizes the interdependence of people, animals, and plants in both the human-built and natural environments.
• 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 HealthDent Technology International in the sale of its gutta-percha material technology business to Dentsply Sirona, a dental equipment maker and dental consumables producer.
• Represent El Camino Hospital in connection with clinical trial agreements with various medical device companies.
• Represented Global Pediatric Surgical Technology and Education Project, Inc. (a/k/a GPSTEP), a California-based nonprofit, in its collaboration with medical device manufacturer, SunMed, LLC, to distribute affordable surgical equipment to pediatric surgeons around the world.