The USPTO said that since the co-assignees of the Tuschl-I IP “have divergent interests, no one side can reasonably expect or be permitted to control the prosecution of [the] patent application [at issue] to the exclusion of the others.”
UMass further argued in its counterclaim that a key aspect of the disputed RNAi technology — the 3’ overhangs commonly incorporated into siRNAs — was an inherent feature of the RNAi molecules described in a patent application filed prior to another patent application from Max Planck that specifically claims the overhangs.
The plaintiffs' counsel also provided some background on the legal dispute, including details of an early-2004 meeting between the chief executives of Alnylam and rival Sirna Therapeutics that led up to the litigation.
According to Whitehead, Alnylam and Max Planck's request to block the case represents an "eleventh hour … rush into court to seek emergency relief from a situation of their own making," and should therefore be denied.
In doing so, the Whitehead Institute for Biomedical Research, the Massachusetts Institute of Technology, and the University of Massachusetts have all asked that the court reject Alnylam Pharmaceuticals and Max Planck's request for an order blocking any Tuschl-I patent issuance.
The lawsuit alleges that the defendants have sought to include in their patent applications inventions that belong solely to Max Planck and licensed exclusively to Alnylam. While licenses to the IP have been a big moneymaker for Alnylam, some companies have begun looking to alternative RNAi technologies.
The patent includes 19 claims related to the use of dsRNA for RNAi, including methods of reducing the expression of a gene, including those of mammalian or viral origin, with dsRNAs between 21 and 23 nucleotides in length, according to Alnylam.