By Suresh Pillai --
Court Denies Bid for Bench Trial in RNAi
Patent Suit
The U.S. District Court for the District of
Massachusetts has denied the bid of defendants Whitehead Institute for
Biomedical Research,
the University of Massachusetts,
and the Massachusetts Institute of Technology to have the merits of their patent dispute with plaintiffs Max Planck
Institute and Max Planck
licensee Alnylam Pharmaceuticals, Inc. decided in a bench trial. The
dispute concerns patent applications filed
with both the United States Patent and Trademark Office and the European Patent
Office. According to the
plaintiffs' amended complaint, the named inventors assigned their interests to
the Whitehead Institute, the Max Planck Institute, the Massachusetts Institute
of Technology, and the University of Massachusetts. The interests assigned in part to the Max Planck institute
constitute the invention referred to in the complaint as the "Tuschl I"
invention. During the same time
period, the plaintiffs allege that a separate group of Max Planck scientists
developed a series of inventions also related to RNAi (the "Tuschl II"
invention). In their complaint,
the plaintiffs allege that the defendants infringed their property rights
in the Tuschl II invention by improperly importing aspects of this invention
into the Tuschl I patent applications (see "Court Report," July 5, 2009).
In its most recent ruling, the District Court
concluded that because the plaintiffs could potentially be awarded damages for
some of their claims, the plaintiffs were entitled to a trial by jury.
Read the amended complaint here.
Federal Jurisdiction Found in
Neuralstem Case
The U.S. Court of Appeals for the Ninth Circuit has
reversed a lower court ruling that the intellectual property dispute between
plaintiff Neuralstem Inc.
and defendant ReNeuron Ltd.
over the plaintiff's proprietary stem cell technology, and has determined that the
case should be tried in California and not in England. Neuralstem first filed suit in 2008,
alleging that ReNeuron had improperly used Neuralstem's technology and that
ReNeuron had defrauded the USPTO by attempting to patent inventions that were
partly the work of Neuralstem. The
companies had both been parties to a joint venture agreement covering aspects
of the technologies in dispute. In
addition to the return of all Neuralstem proprietary information and trade
secrets, Neuralstem is seeking an injunction that would prevent ReNeuron from
using Neuralstem's proprietary information as well as both punitive and
compensatory damages.
Though the lower court found that England would be
a better forum for the suit, due to ReNeuron being incorporated in England, the
applicability of British contract law, and the locations of ReNeuron employees
and key documents, the Court of Appeals held that the District Court had
improperly failed to give adequate weight to the plaintiff's forum choice, the
fact that many of the documents related to the dispute are in California, and
the interest of the State of California and the United States in the outcome of
the litigation.
Read the order here.
Perrigo Victorious in Mucinex® Patent Dispute
The U.S. District Court for the Western District of
Michigan granted summary judgment in favor of Perrigo Co., holding that
based on its claim construction, no reasonable jury could find that the
defendant's generic version of plaintiff Adams Respiratory Therapeutics Inc.'s patented anti-mucus
drug infringed the plaintiff's patent. Adams, a subsidiary of Reckitt Benckiser Group PLC,
originally brought suit in 2007 on the heels of Perrigo's filing of an ANDA
with the FDA seeking regulatory approval to market a generic version of Mucinex®. In its complaint, the plaintiff alleged
that Perrigo's proposed drug would infringe U.S. Patent No. 6,372,252. FDA approval of Perrigo's drug had been
stayed pending the outcome of the current litigation. Following a Markman hearing and the filing of summary
judgment motions, the District Court sided with Perrigo, clearing the way for FDA
approval and Perrigo's entry into the market.
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