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Benitec Settles Lawsuit Against Ambion; Licensing Dispute with Promega Continues


Benitec said this week that it has settled its patent infringement litigation against Ambion, putting an end to one third of a broader lawsuit filed in March.

Under the terms of the settlement, Ambion has received a non-exclusive, world-wide license to make and sell research tools and products that use Benitec’s patented DNA-directed RNAi technology. All claims and counterclaims asserted in the patent lawsuit have been resolved, Benitec noted.

Financial details of the settlement and license were not disclosed.

Earlier this year, Benitec sued Nucleonics, Ambion, and GenScript for infringing a US patent — entitled “Genetic Constructs for Delaying or Repressing the Expression of a Target Gene” — that is the core of Benitec’s ddRNAi platform. The patent essentially covers the knocking down of gene expression in plants, as well as animals, using DNA that transcribes double-stranded RNA, one strand of which has a sequence complementary to that of the target gene.

The suit charged that Ambion had “actual knowledge of the Benitec patent and [had] provided instructions to its customers that, when carried out, infringe the Benitec patent.”

Among Ambion’s product offerings is its line of pSilencer siRNA expression vectors, which include an RNA polymerase III promoter, ampicillin resistance gene, and Escherichia coli origin of replication, according to the company’s website.

“To elicit [gene] silencing, a small DNA insert encoding a short hairpin RNA targeting the gene of interest is cloned into the vector downstream of the Pol III promoter,” the website explains. “Once transfected into mammalian cells, the insert-containing vector expresses the short hairpin RNA, which is rapidly processed by the cellular machinery into siRNA.”

Ambion president Bruce Leander had no comment on the settlement.

John McKinley, chairman and CEO of Benitec, declined to comment on the settlement and the status of the company’s litigation against GenScript and Nucleonics. He did say that Benitec is currently in negotiations with other undisclosed companies over possible licenses to the ddRNAi patent.

He also said that Benitec is handling these license negotiations instead of Promega, which had acquired last year the exclusive right to sublicense the ddRNAi technology in areas outside of human therapeutics. In a recent lawsuit, however, Benitec alleged that Promega has failed to make the payments required under the deal, and as a result has forfeited its sublicensing rights (see RNAi News, 7/30/2004).

McKinley said Benitec is not pursuing the lawsuit against Promega, and the issue is settled as far as his company is concerned. He declined to comment on whether Promega has agreed to give up its sublicensing rights.

In an e-mail sent to RNAi News, Promega said that it “is in clear disagreement with Benitec relating to the sublicensing of [ddRNAi] technology. Promega remains the exclusive licensee of Benitec’s ddRNAi technology in the research market and will continue to be a significant contributor in both providing products and sublicensing others to use this RNAi technology.”

— DM


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