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In New Court Filing, MIT Says Fisher Should Remain Defendant in Suit Against Dharmacon

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The Massachusetts Institute of Technology has filed a response with the US District Court for the District of Massachusetts to Fisher Scientific's efforts to extract itself from a legal dispute between the Institute and Dharmacon, marking the latest salvo in a roughly 5-month-old breach-of-contract and patent-infringement lawsuit.

According to the June 10 court filing, MIT said Fisher Scientific is legitimate party to the case because it both directly infringes on the patent in question and plays an active and significant role in Dharmacon's business dealings.

Additionally, MIT's filing indicates that a mediation between it, Dharmacon, and Fisher Scientific was held prior to the filing of the lawsuit, indicating that the lawsuit was a result of failed negotiations.

In January, MIT sued Dharmacon for allegedly failing to meet its royalty obligations under a December 2001 licensing deal for a portfolio of siRNA-related intellectual property (see RNAi News, 2/11/2005). The suit also named Fisher Scientific as a defendant.


"Fisher cannot simultaneously claim it has no legal responsibility for Dharmacon's actions … while at the same time leading the battle against MIT."

That IP â€" which has been co-exclusively licensed to Dharmacon, Ambion, Qiagen, and Proligo â€" relates to the use of short pieces of double-stranded RNA to mediate RNAi. It includes US patent application no. 09/821,832; US patent application no. 10/255,568; and PCT application no. US01/10188. The IP estate is jointly owned by MIT, the Whitehead Institute, the Max-Planck Institute, and the University of Massachusetts, but MIT is authorized to act as licensing agent on behalf of all the institutes.

A few months later, MIT expanded its suit against Dharmacon to include infringement of an MIT-controlled patent covering reverse transfection technology (see RNAi News, 4/15/2005).

The US patent â€" number 6,544,790, and entitled "Reverse Transfection Method" â€" covers "a reverse transfection method of introducing DNA of interest into cells and arrays, including microarrays, of reverse transfected cells." It had been exclusively licensed to microarray developer Akceli, which formed a collaboration with Dharmacon in late 2003 to develop the technology for RNAi applications but went out of business shortly thereafter (see RNAi News, 3/19/2004).

Late last month, Fisher Scientific requested the court dismiss the portion of MIT's lawsuit in which it was named a defendant because the Institute allegedly failed to show a link between Fisher Scientific and the breach-of-contract and patent-infringement charges against its subsidiary (see RNAi News, 6/3/2005).

Fisher Scientific has said in a court filing that "Fisher and Dharmacon are separate, distinct corporations, and the complaint provides no basis whatsoever for piercing the corporate veil between the two. … Accordingly, the contract-based claims against Fisher must be dismissed."

Further, the company said MIT's "complaint does not allege that Fisher was in any way involved with the alleged patent infringing activity of Dharmacon, nor does it even suggest any fraud on the part of Dharmacon or Fisher regarding their activity as separate corporate entities. Thus, the patent infringement claims against Fisher are defective and must be dismissed."

In its response to Fisher Scientific's request for dismissal, MIT stated in its June 10 court filing that the company is a party to the patent infringement portion of the suit because it "sells … Dharmacon's infringing products. … In fact, Fisher offers for sale the very product MIT named as an example in its [legal] complaint â€" the siArray RTF siRNA library â€" as well as over 100 other siRNA products and reagents."

To illustrate its point, MIT included with its response excerpts from Fisher Scientific's website listing various Dharmacon siRNA products for sale it says infringe its patents. An example can be found at https://www1.fishersci.com/Coupon?catnum=NC9280405.

"Fisher's distribution, sale, and offers for sale of infringing products clearly amount to direct [patent] infringement," MIT states in its filing. "Thus, the allegations as pled in MIT's complaint are not only sufficient to keep Fisher in the case, but are also supported by fact."

In regards to its breach-of-contract claims, MIT alleged that while Fisher Scientific claims "it is nothing more than the innocent 'parent' of Dharmacon … under Massachusetts law … the determination of whether a parent corporation can be held liable for breach of contract by its wholly owned subsidiary depends upon an extremely fact-intensive inquiry," as supported by precedent. MIT stated that Fisher Scientific has not supplied a "declaration or affidavit supporting its … allegations that it should be dropped from the case."

MIT further alleged that Fisher Scientific's claims of being a distinct and separate corporation from Dharmacon are invalid since "Fisher has had a significant role in the proceedings between the parties over the past year â€" with its group and in-house counsel taking leading positions in discussions with MIT and attending mediation."

MIT indicates in its court filing that Fisher Scientific has taken "a lead role in all discussions with MIT relating to the license dispute." According to MIT, Leland Foster, CEO of Fisher Scientific's biochemicals group, and Albert Strausser, vice president of finance of the biochemicals group, were among the participants at a June 2004 meeting to discuss the dispute.

Furthermore, later in 2004 the in-house counsel of MIT and Fisher held both meetings and telephone calls to discuss the situation and possible mediation without the participation of Dharmacon representatives, MIT stated in the court filing. In December 2004, a mediation including Fisher Scientific, Dharmacon, and Fisher Scientific representatives was held, the institute added.

Based on these talks, MIT stated in its court filing that "clearly, one can speculate that Fisher's role is not limited to the publicly available information, but that Fisher has a significant behind-the-scenes role in [Dharmacon's] activities. Fisher is not entitled to dismissal solely because it is the parent of Dharmacon," MIT added.

"Fisher cannot simultaneously claim it has no legal responsibility for Dharmacon's actions … while at the same time leading the battle against MIT," the Institute charged.

Given the early stage of the case, MIT asked the court to deny Fisher Scientific's motion to be removed from the lawsuit and "not reconsider it until MIT has had full discovery on the facts which bear on these factors."

Telephone calls seeking comment from Fisher Scientific were not returned.

Separately, MIT has denied essentially all of the counter-claims made by Dharmacon in its response to the lawsuit, including charges of breaching an implied covenant of good faith and fair dealing, as well as violating Massachusetts law banning "unfair and/or deceptive acts and/or practices." MIT made the denials in a court filing dated June 16.

â€" Doug Macron ([email protected])

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