Ann helps clients commercialize intellectual property and technology rights through a variety of transactions, including M&A, joint ventures, strategic alliances, collaboration and research agreements, material transfer agreements, development agreements, and technology and patent licenses.
Ann has a special emphasis on working with companies in the technology and life sciences areas, including diagnostic, oncolytic, medical device, telemedicine, and other health IT companies. Her knowledge of privacy and cybersecurity allows her to help guide clients in as they navigate rights to “big data,” compliance with state and federal laws, and evolving industry standards for contracting around compliance and risk sharing in these areas, which are increasingly important in IP transactions.
Clients note that Ann excels at project management, is exceptionally integrated as a business partner, and call her a “friend and mentor.”
Ann is a shareholder with Fredrikson & Byron, where she has practiced since 1986. She currently serves on the firm’s Board of Directors and is a member of its Executive Committee. She is a frequent speaker on technology and privacy issues, and also serves on the boards of The Bakken Museum and Medical Alley Association.
Learn More About Licensing Health IT:
What are the biggest trends you see shaping Health IT and the relationships between health care providers and the health IT companies?
Why are information technology licensors moving to “the cloud”?
What should licensees of information technology products do to get the most value out of the software they license?
What data and information technology issues should large health care providers be aware of when considering working with a developer for custom health IT solutions?
What is the biggest challenge to any organization trying to manage health data and information technology?
Patent and Biotech Licensing, Development and Research
- Represented provider of life sciences solutions including reagents, assays, platforms and custom manufacturing and testing services in multiple strategic research transactions supporting new drug and diagnostic testing discovery.
- Represented provider of services and products used in noninvasive reporter gene imaging and oncolytic virology in agreement for joint development of companion diagnostic test and in patent licensing transactions.
- Represented early stage drug discovery companies in patent licenses, research licenses, joint development agreements, and clinical trial agreements with leading health care providers and research institutions in the U.S. and with various research consortia.
- Represented Vyriad, Inc. (Vyriad), a privately-held biotechnology company focused on the development of oncolytic viruses, in a licensing agreement that will allow AstraZeneca’s global biologics research and development arm, MedImmune, to develop and, if successful, to commercialize Vyriad’s lead oncolytic virus program.
- Represented multiple early stage companies in transactions supporting their efforts to commercialize inventions through licensing programs at providers and institutions including Mayo Research Foundation and the University of Minnesota.
- Represented leader in clinically-validated quantitative pulmonary analysis services and software in its negotiation of development, licensing and distribution agreements with leading suppliers of pulmonary imaging equipment and minimally invasive endobronchial lung navigation and biopsy systems.
- Represented Medtronic, Inc. in patent and technology licensing matters including:
- Divestitures of its Prostiva business to Urologix, Inc. and its Pioneer Plus business to Volcano Corporation.
- Settlement agreement, cross licenses and related covenants settling multi-jurisdiction litigation against Edwards LifeSciences regarding TAVI patents and Medtronic’s CoreValve® System ($750,000,000 plus ongoing royalties for total consideration in excess of $1 billion).
- Settlement agreement and patent license settling long-standing litigation alleging W.L. Gore’s alleged infringement of several Medtronic-held patents on technology used in arterial stents and other medical devices ($70,000,000 plus additional quarterly royalties).
- Development, licensing and supply agreement for the development of Scil Technology’s biologic rhGDF-5 (recombinant human Growth and Differentiating Factor 5) dental regenerative technology for use in bone regeneration for dental implant placement and treatment of periodontal disease.
- Development and licensing of Immersion Corp.’s intellectual property related to medical simulation for the training and education of healthcare professionals.
- Licensing of patent rights regarding AC105 to Acorda Therapeutics, Inc. as an acute treatment for patients who have suffered neurological trauma, such as spinal cord injury (SCI) and traumatic brain injury (TBI).
- Joint development, licensing and supply agreements with Vital Images to provide imaging and advanced visualization services for endovascular specialists who use Medtronic’s portfolio of stent grafts to treat aortic aneurysms with “3D Recon,” a service from Medtronic that converts 2D CT axial images to 3D images, offering advanced visualization of the anatomy and aneurysm measurement for device sizing.
SaaS/Software Licensing and Outsourcing Transactions
- Represented leading provider of online technology supporting sports-life management in various partnering arrangements as well as commercialization programs with end users.
- Represented provider of online solutions used in product warranty and registration in development of customer facing licensing and use agreements as well as reseller and other partnering transactions in the retail industry.
- Represented provider of hosted and on premises based solutions that manage cyber risk information in transactions with leading companies in the banking and financial services industry.
- Represented provider of hosted solutions used to support compensation management in the healthcare industry in multiple contract negotiations including provider, partner and end user agreements.
- Represented provider of hosted cloud based data hub used to offer enterprise wide services including data aggregation, reporting, compensation and compliance with multi-year contracting involving buyers in the financial services industry.
- Represented large technology company that provides both premises-based and SaaS model licenses in drafting and negotiating over 50 OEM arrangements with other technology players, including Symantec, Microsoft, VMware and CSI.
- Provided business technology and e-commerce advice to one of the world’s largest medical device manufacturers as it dramatically increased the scope of its e-commerce and direct-to-consumer marketing activities, including acting as lead counsel for:
- E-commerce initiative, which included strategic sourcing of technology resources for website creation, hosting and management; co-branding arrangements; and content licensing and data management for a suite of consumer-focused websites.
- Internal information management systems including employee dashboards and patient data registries.
- Renegotiation of relationships with suppliers of enterprise-wide technology platforms, both custom-developed and off the shelf, and including SaaS or cloud-based systems.
- Acted as lead outside counsel to one of the largest providers of Part D insurance coverage as it launched its Part D business and increased its web-based marketing of a variety of its products, including negotiations with vendors providing hosted data services, network connectivity, call center support, website development and hosting, content delivery, advertising, and co-marketing agreements; advice regarding web-based and other direct-to-consumer marketing programs, including compliance with CANSPAM, do-not-call legislation and other marketing guidelines.
- Negotiated outsourcing agreements for IT services for leading companies in healthcare and financial services.
- Created standard form customer and reseller agreements and negotiated service agreements for dozens of software and SaaS providers.
Cybersecurity and Data Privacy
- Developed incident response plan and related procedures for large multi national in life sciences industry.
- Collaborated on strategy for compliance with FDA guidance on surveillance of cybersecurity vulnerabilities in connected devices, including development of elements of coordinated disclosure program.
- Developed diligence and contracting practices to reduce risks associated with vendor contracting involving processing of personal health and personal financial information for multiple clients, with an emphasis in the life sciences industry.
- Developed and implemented strategies for cross border flow of employee data for major corporations in life sciences, coatings and paper products industries.
- Lead counsel providing strategy, drafting and negotiations regarding compliance with HIPAA and HiTech for life sciences companies providing services as business associates including data hosting and monitoring services and diagnostics.
- Advised leading medical device client on multiple data breach issues.
Articles & Presentations
May 9, 2017
By Ann M. Ladd
The Federal Trade Commission has created a new online resource designed to give small businesses practical guidance on avoiding cyber risks and online scams.Read More
February 3, 2017
By Ann M. Ladd
Like it or not, ransomware is happening, and will continue to happen with increasing frequency. In fact, a recent survey indicates that 93 percent of phishing emails contain ransomware.Read More
Top Trends in Data Protection and Cybersecurity in 2017: Third Party Vendors Will Cause Data Security Incidents
January 14, 2017
By Ann M. Ladd
Do you give vendors access to your networks and systems? Use a third party to host your website, records, or an app? Use cloud-based services to store or process personal or confidential information? If so, a third party likely has access to personal data about your customers, employees, or other valuable company information. Moreover, they may have sent your information further downstream to their own service providers. Using state of the art cybersecurity controls in your IT systems will not minimize your risks of a data breach if you don’t also consider protections for your data in the hands of third parties. Do you know where your data is right now?Read More
Top Trends in Data Protection and Cybersecurity in 2017: Boards Will Continue to Put Cybersecurity On the Top of Their Agenda
January 13, 2017
By Ann M. Ladd
Given the increasing frequency of cybersecurity incidents, and the growing impact of those incidents on business operations, reputation and assets, a board of directors’ oversight activities should include ensuring the adequacy of a company’s cybersecurity measures. The issues are complicated, and there are no simple solutions. But there are things Boards and management can do to begin to quantify and mitigate the risks.Read More
PUBLICATIONS & PRESENTATIONS
- Co-presenter, “There has been a Material Adverse Change - What Happens Now? (How to deal with cyber security or data breach during a transaction),” Transaction Advisor’s Chicago M&A Conference, September 14, 2017
- Moderator, “Practical Steps to Minimize Risks and Respond to Breaches,” Fredrikson & Byron Strategies to Manage Cybersecurity Risks for the Financial Industry Seminar, February 1, 2017
- Co-presenter, “Lessons Learned from Recent HIPAA and Big Data Breaches,” Fredrikson & Byron Health Law Webinar Series, August 12, 2015
- Speaker, “Data Privacy and Security in M&A Transactions,” Data Privacy and Security for In-House Counsel, March 21, 2013 and June 11, 2015
- Co-presenter, “Insulate Your Company from a Cyber Breach - Proactive Steps to Minimize Breach Risks & Impact,” Association of Corporate Counsel - Minnesota Chapter, February 19, 2015
- Speaker, “Recent Decisions in IP Licensing,” Midwest IP Institute, December 3, 2014
- Chair, “Key Contract Cases in Minnesota” MN CLE, January 14, 2014
- Chapter author, “Overarching Issues and Considerations in Divestitures,” co-authored with Rhona E. Shwaid, Managing Corporate Divestitures, published by Aspatore’s “Inside the Minds™” series, 2013
- Moderator, “Data & Health: The New and Necessary Frontier,” The Collaboratives’ Tech.2013: Data, the Cloud, Commerce, Social, Platforms, Niche Tech, Enterprise & Health, May 2, 2013
Honors & Education
- University of Iowa College of Law, J.D., 1986, with high distinction
- Luther College, B.A., History, 1983, magna cum laude
- Minnesota, 1986
- Listed in IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2017
- Minnesota State Bar Association, North Star Lawyer, 2012
- Board of Directors, Iowa Law School Foundation, 2017-present
- Board of Directors, The Bakken Museum, 2012-present
- Board of Directors, Voyaguers National Park Association, 2001-2007, 2008-2012 (Chair, 2009-2010)
- Board of Directors, Minnesota Environmental Fund, 2002-2008