Ann helps clients commercialize intellectual property, data and technology rights through a variety of transactions, including merger and acquisitions, 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, pharma, medical device, telemedicine, and other health IT companies. Her knowledge of privacy and cybersecurity allows her to help guide clients as they navigate rights to “big data” and leverage artificial intelligence, while addressing applicable state and federal laws, and evolving industry standards.
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, 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.
Patent & Biotech Licensing, Development & 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 & 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 & 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.
- University of Iowa College of Law, J.D., 1986, with high distinction
- Luther College, B.A., History, 1983, magna cum laude
- Minnesota, 1986
- BTI Consulting Client Service All-Star, 2022
- IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2021
- North Star Lawyer, Minnesota State Bar Association, 2012, 2020-2021
Civic & Professional
- Iowa Law School Foundation, Board of Directors, 2017-present
- The Bakken Museum, Board of Directors, 2012-present
- Voyaguers National Park Association, Board of Directors, 2001-2007, 2008-2012; Chair, 2009-2010
- Minnesota Environmental Fund, Board of Directors, 2002-2008
News & Insights
Publications & Presentations
AI and Big Data, Fredrikson & Byron Health Law Webinar Series, February 9, 2022
Co-Presenter, Leveraging Big Data in Healthcare: Navigating HIPAA, Stark and AKS Compliance, and Security Issues, Strafford CLE Webinar, September 23, 2021
Panelist, 2021 Economic Outlook, Minneapolis/St. Paul Business Journal and CIBC Event, January 19, 2021
Speaker, Developing for Mobile, The Collider, Rochester, Minnesota, June 12, 2018
Co-Presenter, Key Issues Driving the M&A Market, Fredrikson & Byron Mergers & Acquisitions Seminar, June 19, 2018
Moderator, Emerging Technologies—Remaining Relevant in Highly Technical, Often Speculative Technology, Chief Legal Officers Group Spring Meeting, May 2018
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 Co-Author with Rhona E. Shwaid, Managing Corporate Divestitures, “Overarching Issues and Considerations in 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