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Key RNAi Players Named in Witness Lists in Tuschl IP Dispute

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By Doug Macron

Some of the key players in the RNAi field may be called to testify in a lawsuit filed by Alnylam and Max Planck against the University of Massachusetts, MIT, and the Whitehead Institute for Biomedical Research that seeks to determine who owns key RNAi intellectual property.

Fulfilling part of the pre-trial disclosure process, both sides of the case last week released witness lists for the suit, which is set to go to trial on Feb. 22. Plaintiffs Alnylam and Max Planck's witness list includes four Alnylam co-founders: David Bartel, currently a researcher at MIT; Phillip Sharp, also at MIT; Phillip Zamore, a researcher at the University of Massachusetts Medical School; and Rockefeller University's Thomas Tuschl, an inventor of the technology at issue in the suit.

The plaintiffs also expect to call to testify Bharat Chowrira, formerly Sirna's vice president of legal affairs and patent counsel, and former Sirna President and CEO Howard Robin.

The defendants have indicated they also plan to call Bartel, Sharp, Tuschl, and Zamore to testify. Also on their list are Alnylam CEO John Maraganore; Alnylam's chief patent counsel, Robert Millman; and Timothy Nilsen, director of the Center for RNA Molecular Biology at Case Western Reserve University.

The legal row began in June 2009 when Alnylam and Max Planck sued UMass, MIT, and Whitehead for allegedly incorporating various features of the so-called Tuschl-II IP, namely the use of 3’ overhangs on siRNAs, into Tuschl-I patent applications (see RNAi News, 7/9/2009).

Alnylam holds the exclusive rights to the Tuschl-II estate through a license from the IP's sole owner, Max Planck. However, the company shares therapeutic rights to the Tuschl-I estate — invented at Max Planck, Whitehead, MIT, and UMass — with Merck subsidiary Sirna Therapeutics (see RNAi News, 9/13/2009) and, to a limited degree, CytRx spinout RXi Pharmaceuticals.

In an earlier court filing, the plaintiffs charged that if any Tuschl-II inventions are included in Tuschl-I patents, companies with access to Tuschl-I will "unfairly gain access to the Tuschl-II property without paying consideration for a license."

This summer, Alnylam and Max Planck claimed that the defendants were close to securing a US patent for a Tuschl-I application that incorporated the technology at the heart of the dispute, and asked the court for a preliminary injunction preventing the payment of issuance fees on any Tuschl-I application unless all the IP's co-assignees, including Max Planck, agree that the fee shall be paid (see RNAi News, 7/16/2009). As reported by RNAi News, the move was calculated to effectively halt the prosecution of Tuschl-I IP in the US.

The court later denied the request, but the plaintiffs took another tack, petitioning the USPTO to pull the authorization Max Planck had given Whitehead to use the attorney of its choice in prosecuting Tuschl-I applications, which the patent office eventually did (see RNAi News, 8/27/2009).

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