Joshua T. Hofheimer
Partner, Sidley Austin
Silicon Valley Area, Los Angeles Area
Life Sciences, Food & Drug, Corporate, IP Counseling, Licensing & Tech Transactions
Bio
JOSH HOFHEIMER combines two decades of corporate, commercial and technology law practice with the experience having run a public company to bring his clients focused, practical counsel to help them grow their business and maximize their value and returns. His practice focuses on representing clients in life sciences, agribusiness and food and information technology sectors. Josh’s work spans a broad array of technology, intellectual property and commercial transactions ranging from agricultural technology to medical devices, biotechnology and pharmaceuticals, software, Internet and new media transactions and includes developing and implementing business strategies for commercialization of multiple intellectual property platforms. Notably, he represented Monsanto Company in its publicly announced strategic BioAg Alliance with Novozymes to discover, develop and sell sustainable microbial solutions to improve and protect crop yields for global broad-acre crops, fruits and vegetables. He also has negotiated research, funding and commercialization agreements, licenses, and technology spin-outs, as well as developed strategies to exploit proprietary products growing out of the research programs of agri-tech and bio-tech clientele. Josh also advises clients on general corporate matters. Josh leads the firm’s Global Agribusiness and Food industry group, which has been acknowledged as the only Chambers -ranked Band 1 law firm in the category (2016 & 2017). He has been recognized for his work by several publications, including recommendations by The Legal 500 US in both the Technology: Outsourcing and Technology: Transactions categories (2014–2017). He was selected by LMG Life Sciences as a “Life Science Star - Finance and Transactional” (2013–2016) and named a “California: IP Star” by Managing Intellectual Property - IP Handbook (2013 and 2014). From 2008–2010, Josh was the CEO/Managing Director of Australia’s first publicly listed ag-biotech company, Hexima Limited (HXL:ASX). While at Hexima, Josh led the company’s successful effort to forge a commercial path for its disease control platform, entering into a development and commercialization agreement with DuPont company, Pioneer Hi-Bred. The company established further commercial relationships with leading agribusinesses, Monsanto and Bayer Crop Science and Australian research centers. Prior Sidley work includes representing start-up companies, agriscience companies, convergence technology companies, a semiconductor tooling manufacturer and broadband Internet content providers, for whom Josh has acted as general outside corporate counsel, negotiating business development and strategic agreements such as content syndication agreements, licensing agreements, distribution agreements, e-commerce agreements, marketing and co-promotion agreements, joint venture agreements and web design agreements. He advised Los Angeles County and other large customers on a variety of software related matters, including the county’s acquisition of a new voting system for its election processes, several complex healthcare services systems and a new multi-layered county-wide traffic control system.
Matters
  • Represented Asilomar Bio in its exclusive commercial license agreement with Koch Biological Solutions, LLC (Koch) for Koch to commercialize and market products containing Asilomar Bio’s flagship yield enhancement technology for foliar and in-furrow application on a broad set of crops, including all major row crops.
  • Represented The Climate Corporation in its Digital Ag Alliance agreement with AGCO.
  • Represented Monsanto Company in the establishment of a joint venture with Remington Holding Company LLC, called Innovative Seed Solutions, LLC, focused initially on sorghum development. In a related transaction, a subsidiary of Remington purchased Monsanto’s sorghum production assets in the United States.
  • Represented Radiant Genomics in an R&D collaboration with DOW AgroSciences. The collaboration combines the proprietary metagenomic and engineering-biology technologies from Radiant Genomics with Dow AgroSciences’ natural products discovery and product development capabilities to deliver new products from naturally derived chemistries.
  • Represented Monsanto Company in its BioAg Alliance with Novozymes to discover, develop and sell sustainable microbial solutions to improve and protect crop yields for global broad-acre crops, fruits and vegetables.
  • Represented the Syngenta Foundation for Sustainable Agriculture in the structuring and spin-out of its crop insurance and services business, Agriculture and Climate Risk Enterprise, Ltd. (ACRE), into a standalone entity based in Kenya, east Africa.
  • Represented NexSteppe, Inc. in its collaboration with DuPont to develop advanced feedstocks for biofuels, biopower and biobased products. The collaboration focuses on the development of new sweet sorghum and high biomass sorghum hybrids and DuPont, through its Pioneer Hi-Bred business, will provide knowledge, resources and advanced technologies to help the company accelerate the breeding and commercialization of these crops in the United States and Brazil.
  • Represented Monsanto Company in a jointly-funded multi-year research, collaboration, and exclusive commercialization agreement with BASF AG to develop high-yield and stress tolerant traits for corn, soy, cotton and canola.
  • Represented Mendel Biotechnology, Inc. in an exclusive research and development agreement with BP Technology Ventures in which BP funds the development and commercialization by Mendel of cellulosic grasses (miscanthus, sorghum, switchgrass) suitable for biofuel. The research funding agreement was coupled with an equity investment in Mendel.
  • Represented Nektar Therapeutics in its in multi-billion dollar global strategic development and commercialization collaboration with Bristol-Myers Squibb Company (NYSE:BMY) for Nektar’s CD122-biased agonist, NKTR-214. Under the terms of the agreement, the companies will jointly develop and commercialize NKTR-214 in combination with Bristol-Myers Squibb’s Opdivo (nivolumab) and Opdivo plus Yervoy (ipilimumab) in more than 20 indications across nine tumor types–including melanoma, renal cell carcinoma, non-small cell lung cancer, bladder and triple negative breast cancer–as well as potential combinations with other anti-cancer agents from either of the respective companies and/or third parties.
  • Represented Nektar Therapeutics in a strategic collaboration with Eli Lilly to co-develop NKTR-358, a novel immunological therapy discovered by Nektar. NKTR-358 is a possible first-in-class therapeutic that has the potential to treat a number of autoimmune and other chronic inflammatory conditions.
  • Represented Evaxion Biotech in an exclusive license and research agreement with Moderna Therapeutics to provide bioinformatics and preclinical research support to advance early development efforts for a novel messenger RNA (mRNA) infectious disease vaccine against an undisclosed infectious disease target.
  • Represented GlaxoSmithKline plc in its announced collaboration with Avalon Ventures to fund and launch up to ten early-stage life sciences companies in San Diego. Sidley provided counsel to GSK on the organization of the master collaboration and funding agreements, as well as structuring the downstream options for acquiring the various portfolio companies. Under the agreements, GSK will provide up to $465 million in seed funding and payments upon the achievement of certain development milestones and Avalon will provide funding of up to $30 million.
  • Represented a leading US pharmaceutical company in a development, commercialization and manufacturing agreement with a Japanese pharmaceutical company to launch our client’s product in Japan.
  • Represented Acumen Pharmaceuticals in licensing and evaluation agreements with Elan Pharmaceuticals and ADX Neurosciences for Acumen’s proprietary therapeutics and diagnostics for the detection and treatment of Alzheimers.
  • Represented DaVita, a publicly listed healthcare provider, in multi-party agreements to develop and deploy an in-house mail order pharmacy system to service DaVita’s nation-wide dialysis centers.
  • Represents MasterCard in agreements for the development, distribution and hosting of multi-function platforms for customer and cardholder loyalty, travel and small business focused suite of products and services.
  • Represented County of Los Angeles and San Diego County, in multiple twenty million dollar plus information technology procurement and outsourcing agreements for critical county services, including voting systems, assessor property tax management systems, 911 response management systems, prison health systems and mental health patient management and reimbursement systems.
  • Represented CNET Networks, a publicly listed media company, in the $45 Million sale of its Webshots business division to American Greeting Cards, through an APA and a substantial transition services agreement.
  • Represented Asilomar Bio in its US$12 million Series B financing
  • Represented Monsanto Growth Ventures in its investment in NewLeaf Symbiotics’ US$24 million Series C financing
  • Represented Radiant Genomics in Dow Agricultural Science’s convertible note financing
  • Represented Terramera, Inc. in its US$11 million Series B financing
  • Represented Finistere Ventures and Seed2Growth in their investment in Shopwell’s US$2.4 million Series A financing
  • Represented CHEVOO in their US$4.5 million Series A financing
  • Represented ripe.io in their convertible note financings
  • Represented Green & Grow, Inc. in their US$6 million Series B financing
  • Represented Improved Nature, LLC in their Series A financing
  • Represented Global Growables, Inc. in their convertible note financings
Clients
Acumen Pharmaceuticals Asilomar Bio CHEVOO CNET Networks, Inc. County of Los Angeles DaVita Evaxion Biotech Finistere Ventures GlaxoSmithKline Global Growables Green & Grow Improved Nature MasterCard Mendel Biotechnology Monsanto Monsanto Growth Ventures Nektar Therapeutics NexSteppe Radiant Genomics ripe.io San Diego County Syngenta Foundation Terramera The Climate Corporation
Schools
1995
Harvard Law School
J.D. cum laude
1991
Dartmouth College
A.B. magna cum laude
Phi Beta Kappa, Rufus Choate Scholar
Bar Admissions

California

Clerkships
U.S. District Court, E.D. of New York (Charles Sifton)