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Bankrupt Traversa Settles IP Dispute as Alnylam, Isis Claim Delays in Tekmira Suit


The intellectual property ownership dispute between a former Traversa Therapeutics executive and the bankrupt company has been settled, with the executive buying the US patent application at issue, Gene Silencing News has learned.

With the IP in hand, Traversa's former director of chemistry Scott Petersen is continuing his efforts to find a pharmaceutical company interested in acquiring the application, No. 20110294869, and hiring him to continue development of the RNAi drug-delivery technology it covers, he said last week.

Meanwhile, an IP lawsuit filed by Alnylam Pharmaceuticals and Isis Pharmaceuticals against Tekmira Pharmaceuticals continues to slowly simmer, with allegations by the plaintiffs that Tekmira has been dragging its feet when it comes to scheduling the phases of the litigation.

Alnylam and Isis late last month asked the court hearing the case to itself schedule a meeting between the litigants so that discovery in the case can proceed.

Traversa Tribulation

As previously reported, Traversa declared bankruptcy earlier this year and began liquidating its assets (GSN 5/31/2012). Although the company was best known for its so-called PTD-DRBD RNAi delivery technology, which combines protein transduction domains linked with a double-stranded RNA binding domain, it has also been working on an alternative delivery approach dubbed siRNN.

The second technology involves direct modification of an oligo's phosphate backbone in order to mask its negative charge and facilitate its transport through the cellular membrane, and it was initially developed by Petersen during his time as a researcher in the lab of University of California, San Diego, researcher and Traversa co-founder Steven Dowdy.

During bankruptcy proceedings, Traversa had aimed to sell the siRNN technology and IP with its other assets to former CSO Curt Bradshaw, but Petersen staked a claim to it, submitting a court filing to block its sale (GSN 8/16/2012). Although the '869 application was assigned to Traversa, Petersen argued that he had acquired its full rights upon the firm's declaration of bankruptcy.

Importantly, Petersen maintained that he began reducing the technology to practice about two weeks before he was hired by Traversa.

That same month, Traversa asserted its rights to the siRNN technology, telling the bankruptcy court that it “owns the entire right, title, and interest” to the patent application, and that it should be granted the right to sell it “free and clear” (GSN 8/23/2012).

According to Petersen, the court upheld his opposition to Traversa's plan to sell the IP late last month, and he paid $40,000 at auction to secure the company's limited rights to the '869 patent application and a related Patent Cooperation Treaty patent application, as well as the “unfettered” ability to use all siRNN data generated by Traversa.

“By consolidating my interest and the remaining Traversa rights, I am now the exclusive owner of all rights and title to the technology,” he noted in an e-mail. “I am also very happy that the trustee [overseeing the bankruptcy] now has additional funds to reimburse creditors and that Traversa funds were not consumed by protracted and costly evidentiary proceedings to determine the ownership rights” of the patent application.

Petersen told Gene Silencing News that there has been interest from pharma players in buying the IP outright, and while he has not ruled out simply selling off the patented technology, he said he is still hoping to secure “an equitable employment contract and reimbursement of expenses associated with the acquisition” of the IP.

Alnylam Acrimony

The legal row between Isis, Alnylam, and Tekmira, meantime, began in January when Isis and Alnylam sued Tekmira for infringing a number of patents to which Alnylam claims exclusive rights by providing its lipid nanoparticle-formulated siRNAs to collaborator Bristol-Myers Squibb (GSN 1/19/2012).

Alnylam pointed to an exclusive license it took in 2007 to use Inex Pharmaceuticals' liposomal delivery technology IP for RNAi applications. Inex later changed its name to Tekmira and merged with Protiva Biotherapeutics.

In its suit, Alnylam said that Tekmira was granted access to this IP to develop and market RNAi therapeutics, but only against certain gene targets. Tekmira's deal with Bristol-Myers Squibb falls outside of this arrangement, Alnylam argued.

As part of the suit, Tekmira is also charged with infringing an Isis patent to which Alnylam holds co-exclusive rights.

In a letter to the court hearing the case, Alnylam and Isis said that the companies have yet to meet in order to set guidelines for the case's discovery proceedings as Tekmira “refuses to engage in a conference” as it waits on motions to dismiss the case and to dismiss the plaintiff's counsel.

“This case will proceed forward at least on Isis’s patent … [since] Tekmira does not challenge plaintiffs’
standing to assert the Isis patent,” Alnylam and Isis said. As such, they have asked the court to set a date for a conference between the litigants so that they may “start discovery in this case, which was filed eight months ago.”

The litigation is separate from a lawsuit Tekmira filed against Alnylam in early 2011, alleging misappropriation of trade secrets (GSN 3/17/2011). That case is expected to go to trial in late October.