As part of the settlement, the financial terms of which are confidential, Promega will have a worldwide non-exclusive license to make and sell DNA-directed RNAi-based research products. In addition, Promega will receive cash payments and royalties from certain sublicenses.
The settlement resolves all claims and counterclaims, the companies said, including those involving Ambion and the Commonwealth Scientific and Industrial Research Organization of Australia.
Benitec and Promega have been fighting in the US District Court of Delaware since last year over an exclusive license to Benitec's expressed RNAi technology. In 2003, Benitec granted Promega the exclusive rights to use and sublicense the technology, termed DNA-directed RNAi, in areas outside human therapeutics. In July 2004, however, Benitec sued Promega for failing to meet its royalty obligations under the arrangement.
Benitec alleged that Promega's exclusive license to the ddRNAi technology had therefore reverted to a non-exclusive one. Promega responded with a countersuit charging that it deducted tax payments that it made on behalf of Benitec from its royalty payments, and that its ddRNAi license remains exclusive.