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Two and a half years after landing neurological drug developer Renovis Inc. as a client, Latham & Watkins partner Alan Mendelson has guided the South San Francisco biotech company through a $45 million private-funding round, an IPO and now a major licensing deal with drug maker Pfizer Inc. The two companies will collaborate to develop and market treatments targeting the VR1 receptor, a protein dealing with the generation of pain. Not only have the companies entered into a financial arrangement, but scientists from both companies will join forces on the research. “I’ve been doing this kind of work for 16 years, and I haven’t seen this happen yet,” said Latham & Watkins partner Charles Hoyng, who also worked on the agreement. As part of the deal, Pfizer pays Renovis a $10 million license fee for the technology it has developed, as well as more than $7 million in research funding. Additionally, Renovis is eligible to receive more than $170 million from Pfizer, assuming certain milestones are met through R&D, approval and commercialization of the potential therapies. “This program was one that Renovis identified as wanting to partner,” Mendelson said. “Pfizer had a strong interest early on and was very aggressive about pursuing the activity.” The agreement is the second major announcement for Renovis, which recently reported Phase 3 data for Cerovive, a stroke product partnered to Astrazeneca. Cerovive was a product of Centaur Pharmaceuticals, a company that was acquired by Renovis in 2002. “My friend John Walker was brought in by the Centaur board,” Mendelson recalled. “The irony is that he called me to represent Centaur, but he was so uncertain about the future [of the company].” In the end, Mendelson didn’t represent Centaur in its acquisition by Renovis ( Fenwick & West did), but after that merger he took over as counsel to Renovis. “Corey Goodman, their CEO, has become one of my closest friends,” Mendelson said. “And for guys like him, I live and die with their success and failure.” Latham’s team also included associates John Wehrli, Mark Roeder and Christopher Hazuka. Pfizer was represented by its in-house attorneys. — Marie-Anne Hogarth 2 COMPANIES BECOME 1 PALM Just as there’s only one Madonna and one Cher, soon there will be a single Palm. PalmOne Inc. is paying $30 million to PalmSource Inc. for full rights to the Palm trademark. The two companies have been sharing the name through a jointly owned trademark holding company since Palm Inc. was split into two entities in 2003. The company’s operating system was spun out as a separate subsidiary, PalmSource, and the remainder of the company acquired Handspring Inc. and became PalmOne. “Working on a transaction involving a jointly owned trademark holding company provided an interesting set of legal challenges,” said Aaron Hendelman, a senior associate at Wilson Sonsini Goodrich & Rosati who represented PalmOne. While it’s rare for companies to split ownership of a mark, the companies that descended from Palm both wanted to be identified with the famous brand. The holding company structure gave both “the benefit of the brand perpetually regardless of acquisition by a third party or financial condition,” said PalmOne Associate General Counsel Soraya Gillis. It also allowed the marks “to be identified with a single source.” But PalmSource found through market research that consumers tended to associate the Palm name with the handheld device rather than the operating system. PalmSource attorney Stephen Fronk, an associate at Howard, Rice, Nemerovski, Canady, Falk & Rabkin, said that’s why the company decided to create a new brand. Milpitas-based PalmOne is buying out PalmSource’s 55 percent interest in the company. It will make payments in installments over 3 1/2 years and have certain rights to Palm trademarks for a four-year transition period. PalmOne will change its name to Palm Inc. later this year. Sunnyvale’s PalmSource sells the operating system used in PalmOne’s handheld devices and Treo “smartphones.” In a separate transaction the two companies renewed a licensing agreement for PalmOne to use PalmSource’s operating system through 2009. Under the agreement, PalmSource will receive minimum royalty payments of $148.5 million, including $65 million for calendar years 2007-09 provided the company reaches certain development milestones. The Wilson Sonsini team representing PalmOne in the Palm name purchase included partners Bradley Finkelstein, Ivan Humphreys, associates John Chase and Brandon Ponichter and PalmOne Associate General Counsel Melissa Cha. DLA Piper Rudnick Gray Cary represented PalmOne in the licensing transaction. The team included partner Maureen Dorney, associate Jeffrey Aronson and PalmOne’s Gillis. Howard, Rice represented PalmSource in both transactions. The team was led by Fronk and partner Teresa Johnson, with assistance from partners Deborah Marshall, Karen Frank, Benjamin Berk, associates Edward Deibert and Julia Vax and PalmSource Associate General Counsel Patricia Cox and Geraldine McGrath.Brenda Sandburg

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