Cohen/Boyer patent information, 1986

Letter dated February 1, 1988 from Katharine Ku to Sarah S. Friel, Centocor, at top right "Dr. Stan Cohen" handwritten; "file" handwritten by SNC; "Re: Stanford Docket S74-043, "DNA Cloning"; "Enclosed is a fully executed copy of the Agreement for your records. We are delighted Centocor is a Cohen-Boyer licensee. "; agreement is not attached to this letter, though photocopy shows paperclip

Letter dated January 29, 1988 from Katharine Ku to Steve Peltzman, Applied BioTechnology Inc., at top right "Stan Cohen FYI P.S. Austgen-Biojet terminated" handwritten, "file" written by SNC; "Re: Stanford Docket S74-043, "DNA Cloning", "We are delighted Applied BioTechnology will become a Cohen-Boyer licensee. Enclosed are two execution copies of the License Agreement for your signature.", agreement is not attached to this letter, though photocopy shows paperclip; stapled behind is another letter dated January 29, 1988 from Katharine Ku to Sarah S. Friel, Centocor, "Re: Stanford Docket S74-043, "DNA Cloning"; ". . . You indicated that you had the duplicate originals of the Agreement for signature; if you have any questions, please call me. Otherwise we will be expecting the executed Agreement and payment any day."; agreement is not attached to this letter, though photocopy shows paperclip

Letter dated December 11, 1986 from Katharine Ku to S. Guttmann and C.S. Morris of Sandoz AG in Switzerland, "Re: Stanford Docket S74-043, "DNA Cloning", "For companies who signed after July 1986 but before we changed the royalty terms, we were offering a Five-Thousand Dollar ($5,000) license issue fee. We inadvertently failed to offer Sandoz the same terms and thus Sandoz paid $10,000"

Form letter template from Katharine Ku with handwritten date "12/11/86" and handwritten "Dr. Stanley Cohen FYI--Kathy" in upper right; letter text about DNA probes, "We have been asked by one of our licensees to clarify the meaning of "intact gene" and "foreign gene" as used in the patents under the subject license and, in particular, with respect to DNA probes. . . . . please be advised that DNA probes are considered to be Licensed Products and their associated royalty obligations are payable."

One page spreadsheet "Annual Royalties" for Docket No: S74-043, Fiscal year: 1985-86; Gross Income $1,255,145.98 - Admin. Fee $188,271.90 - Current Expenses (Fiscal Year) $63,308.93; Net Income $1,003,565.15 divided 50/50 with UC; "Net Income to Stanford 501,782.57", divided 1/3 to SNC $167,260.86 + 1/3 to SNC's two departments (1/6 to Genetics $83,630.43, 1/6 to Medicine $83,630.43) + 1/3 to School of Medicine $167,260.86; stapled behind spreadsheet is small paper with OTL letterhead, a note dated November 21, 1986 from Sally Hines to SNC, "Per your secretary's request, attached are copies of the reports we send to UC each year on the DNA Cloning patents. These reports reflect all income and expenses." Behind note are stapled five one-page spreadsheets with Report for Distribution of License Revenue for Stanford Fiscal Year (September 1 - August 31) 1985-86 ("SH" in lower right); 1984-85 "Total License Revenues $857,190.82" ("F. Grolle" in lower right); 1983-84 "License Revenues $700,645.10" ("S. Hines" in lower right); 1982-83 "License Revenues $686,720.88" ("FG" in lower right); and "Report Through August 3, 1982", "Income $1,447,000" (no name attached to this spreadsheet)

Letter dated November 4, 1986 from Katharine Ku to C.S. Morris, Sandoz AG, at top right handwritten "bcc: Stan Cohen FYI--Kathy"; "Re: Stanford Docket S74-043, "DNA Cloning"; "We are pleased that Sandoz has decided to become a licensee of the Cohen-Boyer patents. Enclosed for execution are two signed copies of the License Agreement"; agreement is not attached to this letter

Clipping of article "Technology Licensing staff takes ideas to market," by Julia Sommer, Campus Report, June 11, 1986, p. 19. Paragraphs 15-20 about Cohen/Boyer patents, beginning: "Probably the most publicized technology licensing endeavor is OTL's genetics engineering licensing program, which is based on two patents and a patent application covering gene cloning techniques, and the recombinant molecules produced through these techniques, developed by Stanley Cohen of Stanford and Herbert Boyer of UC-San Francisco."

Letter dated October 17, 1986 from Katharine Ku to Scott G. Hallquist, Immunex Corp., at top right handwritten "Stan Cohen" and in SNC's handwriting "file"; "Re: Stanford Docket S74-043, "DNA Cloning"; text: "We are pleased that Immunex has decided to take the Cohen-Boyer license. . . . although Stanford has announced a change in royalty rates for new licensees, we are willing to license Immunex under the terms we had discussed previously."

24-page "Tissue Plasminogen Activator" report by Floyd Grolle, OTL, August 1986; upper right of cover page "Cohen/Boyer patent file" handwritten by SNC

Article "Licensing Program for Basic Gene Splicing Techniques, ACS Honors Cooperative UC-Stanford Biotechnology Licensing Program," While you were in, Vol. 4, p. 2, August 1986 (newsletter is "News for the Office of the President, University of California"); handwritten note "9/26/86 Stan Cohen FYI--Kathy"; American Chemical Society award to Stanford OTL and UC Office of Technology Transfer for "insightful and enlightened cooperative licensing of the Boyer/Cohen U.S. Patent No. 4,237,224"

Memo dated September 22, 1986 from Niels Reimers to Robert Street, Pat Devaney, Jim Rosse, Donald Kennedy, Kent Peterson, Bill Massy, David Korn, and Stanley Cohen, handwritten by SNC in upper right of memo is "File Cohen/Boyer patent"; re ACS award; "It was given following a "Symposium on Innovation to Regain the U.S. Competitive Edge." The attached paper, given during the symposium, may be of interest."; clipped to memo is "Licensing of Recombinant DNA Technology" by Niels Reimers

Memo dated September 15, 1986 from K. Ku to Don Dunner, Bert Rowland, Adrian Arima, and Aldo Test, "Subject: DNA Cloning"; upper right of memo has handwritten "Stan--FYI--Kathy" and "Cohen/Boyer patent file" handwritten by SNC; memo text includes "Enclosed is a draft letter for your review and comment. With respect to "foreign gene" and "DNA probes," we present three alternative positions we could publicly announce; we could, of course, not address those issues until it becomes necessary", also asks for comments on "announced changes to the earned royalty terms, effective October 1. There will be a flat 1% earned royalty on End Products and a flat 3% on Bulk Products (compared to the previous decreasing royalties based on sales volume)."; attached to memo is template of form letter with three alternative positions re "foreign gene" and "DNA probes"; Alt. 1 and Alt. 2 start "While to us it is clear that techniques of the patents are used to make DNA segments used for probes, we recognize that the patent wording could be more precised with respect to such coverage; but recall the term "DNA probe" was not available in 1974 when the patent was filed."; Alt. 1 continues, "Hence, please be advised that, pending action by the Patent Office on No. 602,294, royalty payments for DNA probes may be put into escrow."; Alt. 2 continues, "Hence, please be advised that no royalty payment for DNA probes will be required until the Patent Office has rendered a decision."; Alt. 3: "It is clear that techniques of the patents are used to make DNA segments used for probes. Hence, please be advised that DNA probes are considered to be Licensed Products and their associated royalty obligations are payable."

Memo dated September 2, 1986 from Niels Reimers to Jasper Williams, cc S. N. Cohen, W. F. Massy; upper right of memo has "file" handwritten by SNC; text discusses "Agreement wherein the University agrees to amend Stan Cohen's royalty-sharing Agreement insofar as his binding pledge to make an annual gift to a charitable organization. I should note that Stan has indicated that he still plans to make an annual gift of his share of royalties to a charitable organization, but does not wish to be bound to do so.", NR has drafted agreement for signature by Bill Massy, "I want to be sure that David Korn, Bill Massy, Bob Street, and Don Kennedy know about this before it is executed and have the opportunity to comment.", would let public know "in a low key way, perhaps as an additional paragraph to another news release. I'll be discussing the form of that with Spyros and Stan."; no attachment

Two-page memo dated September 12, 1986 from Niels Reimers to SNC, "SUBJECT: "Agreement dated June 19, 1975, Concerning Rights in Invention between Stanley N. Cohen and Stanford University (Stanford Docket S74-043)"; "That agreement was amended December 28, 1982, with respect to payment of the inventor's share of royalty income. Pursuant to your request, this memorandum will further amend the subject agreement insofar as your binding pledge to make an annual gift to a charitable organization"; memo signed by NR at bottom like a letter, below which "AGREED AND ACCEPTED" signature lines for "THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY" (unsigned) and SNC (signed September 21, 1986)

Undated draft of Niels Reimer article "Licensing of Recombinant DNA Technology"; upper right of first page has "file" handwritten by SNC; final version of paper given during 1986 "Symposium on Innovation to Regain the U.S. Competitive Edge";

Memo dated July 31, 1986 from Niels Reimers to SNC, "SUBJECT: Change to Royalty-Sharing Agreement"; "Attached is my draft of an Amendment to the Royalty Distribution agreement between yourself and Stanford that changes your "binding pledge" to make an annual gift of your royalty distribution to a charitable organization."; memo says copies of original Agreement and first Amendment attached, but they are not attached to this copy of memo; NR asks SNC to review draft and "I will want to have it reviewed by staff legal counsel, and I will review its subject matter with Drs. Korn, Kennedy and Street"; upper right of first page has "file - Cohen/Boyer patent" handwritten by SNC; attached three-page draft Agreement

Two-page memo dated August 18, 1986 from Niels Reimers to SNC; "Pursuant to your request, this letter will further amend the subject agreement insofar as your binding pledge to make an annual gift to a charitable organization."; post-it attached to front dated 8/18/86 "Please call Niels Reimers after reading this at 723-0651 and let him know if any changes need to be made."; "OK" at bottom of post-it handwritten by SNC

Letter dated August 14, 1986 from Katharine Ku to Claire Wake, Damon Biotech, Inc., "Re: Stanford Docket S74-043, "DNA Cloning"; "I consider the enclosed fully executed Agreement to be one of my (and your) major accomplishments this year!"; agreement is not attached to this letter; at top right handwritten "Dr. Stan Cohen" and "Cohen/Boyer patent file" handwritten by SNC; at bottom of letter "8/14 Stan: Damon & Microgenics are recent new licensees. We now have 79. K"; stapled to letter is two-page list "Cohen-Boyer Licensees . . . . as of 8-11-86" listing 79 licensees

Letter dated July 30, 1986 from Katharine Ku to Steven M. Odre, AmGen, "Re: Stanford Docket S74-043, "DNA Cloning"; " re "Assignment of the Cohen/Boyer DNA Cloning License by BioLogicals to AmGen"

Memo dated March 28, 1986 from SNC to David Korn, "SUBJECT: Royalties from the Cohen/Boyer Patent" thanks for update re 4 Postdoctoral Fellows supported by Bernard Cohen Postdoctoral Fellowship Fund; OTL estimates Cohen/Boyer patent royalties to Stanford and UC from 1986-1997 will total $106 million; "There are several issues regarding the Cohen/Boyer patent royalties and royalty distributions that I believe are worthwhile discussing with you if the financial return to the School of Medicine is to be maximized. Please let me know if and when you would like to have such a discussion."; attached "PRELIMINARY ESTIMATES OF COHEN-BOYER PRODUCT SALES 1986-1997" prepared by Floyd Grolle of OTL March 26, 1986, marked "CONFIDENTIAL"

Legal documents from and patent documents prepared by Leydig, Voit & Mayer: log sheet "Attention: Kathy Ku" covering period 4-25-84 to 4/29/86, listing papers pertaining to "Process and Composition for Biologically functional molecular chimera", Stanford Docket S74-043, for client Stanford; cover sheet identical to that on seven documents cataloged in Rows 50-54, 65-66 of this spreadsheet, except that newest entry on this table is "Fee sheet/ Third Pre. Amend.", Official Date 4/25/86, Forwarded to Client 4/29/86; attached Transmittal Sheet dated April 25, 1986 and signed by Bertram I. Rowland, and three-page "THIRD PRELIMINARY AMENDMENT" adding new Claims 69-77, signed by Bertram I. Rowland on April 25, 1986

Letter dated March 28, 1986 from Michael F. Borun, Marshall O'Toole, et al. on behalf of Amgen to Katherine [sic] Ku; "For Dr. Stanley Cohen" handwritten in upper right, also "file" handwritten by SNC; enclosed $10,000 check "representing 1986 payment by Amgen as assignee of Bio Logicals, Inc."; copy of check not attached

Memo identical to one catalogued in Row 87 of this spreadsheet; no attachment

Letter dated February 18, 1986 from Charles E. Lipsey of Finnegan, Henderson, Farabow, Garrett & Dunner in Washington, DC to Katharine Ku; "Enclosed is a draft second Preliminary Amendment for your review.", "Error p.24" handwritten by SNC near bottom of letter; handwritten note from Katharine Ku clipped to letter, "2/25/86 Stan: Please review this as a contrast to Bert's version. . . ." attached SECOND PRELIMINARY AGREEMENT" cancels Claims 40-44 and adds Claims 45-62.

Letter dated February 18, 1986 from SNC to Bertram Rowland; "When we last met I mentioned to you a 1962 paper by W. Szybalski and E. H. Szybalska in which authors reported a system for accomplishing DNA-mediated heritable transformation of a biochemical trait into mammalian cells. You indicated that this information would be of use to you in extending the scope of the Cohen/Boyer patent(s)."; gives bibliographic info: PNAS, Vol. 48: 2026-2034.

Two-page letter dated January 6, 1986 from Bertram I. Rowland to SNC; "The following are some of my thoughts that I would like to discuss with you when we meet on Tuesday afternoon.", next six paragraphs detail his thoughts and questions; first page of letter has handwritten notes by SNC

Letter dated January 28, 1986 from Katharine Ku to John Demeter, Rohm & Haas Company; "Stan Cohen" handwritten in upper right, also "file" handwritten by SNC; "Enclosed is a fully executed copy of the DNA Cloning License Agreement for your records. You will be happy to know that the payment for this year is only $10,000, not $20,000, since your license issue fee will serve as the 1986 annual minimum royalty."