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Tekmira Amends Alnylam Lawsuit to Include AlCana Technologies

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By Doug Macron

Tekmira Pharmaceuticals last week announced that it has amended its trade secret-misappropriation lawsuit against partner Alnylam Pharmaceuticals to include allegations against Canadian start-up and Alnylam collaborator AlCana Technologies.

“AlCana … is an instrument of Alnylam,” Tekmira charged in the new complaint. “AlCana is controlled by, and operates for the benefit of, Alnylam.

“Through the AlCana vehicle, Alnylam sought to escape the licensing and royalty obligations of [its arrangement with Tekmira] and to acquire exclusive rights to Tekmira confidential information, including trade secrets, depriving Tekmira both of royalty streams and the right to use [its] own confidential information … for its own purposes,” it stated.

The dispute began earlier this year, when Tekmira sued Alnylam for allegedly misusing trade secrets related to its lipid-based delivery technologies (GSN 3/17/2011).

“Alnylam abused its collaborator status and access to [the] confidential information by improperly using this information for its own internal purposes and to replicate a competing technology in ways that were unauthorized and without our consent,” Tekmira President and CEO Mark Murray said at the time during a conference call held to discuss the lawsuit.

“Alnylam repeatedly went so far as to use our proprietary delivery technology to apply for patents based on our confidential information, claiming as its own the very technology that it stole,” he added. “This illegal activity continues today, as Alnylam continues to prosecute patent filings that use or are derived from our technology.”

The next month, Alnylam responded to the litigation, denying the charges and countersuing Tekmira for, among other things, violating provisions in the companies' partnership agreements to handle disagreements through “confidential and non-public alternative dispute resolution procedures” (GSN 4/7/2011).

Last week, Tekmira expanded its suit to include AlCana, an Alnylam collaborator that Tekmira asserts is merely a vehicle through which Alnylam “funneled Tekmira's … trade secrets” to itself.

In its countersuit, Alnylam portrayed its relationship with AlCana as a means of maintaining a relationship with key scientists who were let go from Tekmira following its merger with Protiva Biotherapeutics in 2008 (GSN 4/3/2008).

“In October 2008 and despite Alnylam’s protests as both a partner and a shareholder, Tekmira’s new management abruptly terminated the employment of several scientists who were originally employed by [Protiva's one-time parent firm Inex Pharmaceuticals] and had invented important RNAi delivery technology licensed by Tekmira to Alnylam,” it said in a court filing. “Dismayed by the terminations and fearing the loss of access to the expertise of these individuals, Alnylam entered into consulting agreements with the scientists after they were terminated by Tekmira. These scientists went on to form a new company, AlCana, which worked closely with the University of British Columbia.”

Alnylam added that it helped negotiate an agreement between the companies in order to ensure that AlCana discoveries would not be claimed by Tekmira.

In the amended complaint, however, Tekmira painted a different picture of the situation.

According to Tekmira, following its merger with Protiva, a number of its scientists were let go as part of a corporate reorganization, and all of them had signed employment agreements with non-compete clauses.

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“Unbeknownst to Tekmira, Alnylam hired these ex-employees … [who began] working as consultants for Alnylam in violation of their non-compete obligations to Tekmira,” the amended suit charges. Shortly thereafter, Alnylam “supported the formation” of AlCana, installing one of the former Tekmira scientists as president and CEO and several others as employees.

“In all relevant aspects, AlCana (a name that is a contraction of Alnylam Canada) … operates for the benefit of Alnylam,” Tekmira alleged. “Alnylam funded and orchestrated the creation of AlCana, pays the salaries of AlCana's employees, funds AlCana's research, controls AlCana's patenting activities … dictates decisions on ownership of AlCana's purported inventions, and makes itself the exclusive licensee of any AlCana purported inventions.”

The amended suit further alleges that AlCana is a way for Alnylam to avoid its obligations to Tekmira and pick up access to otherwise restricted technologies including the so-called MC3 delivery technology that Alnylam had said would be used in its upcoming cholesterol therapy ALN-PCS (GSN 11/11/2010).

According to Tekmira, MC3 belongs to a class of ionizable lipids that can be altered through the addition of carbon atoms to separate certain functional groups present in the lipids. The “C” represents the carbon atom, therefore MC3 reflects the presence of three of the atoms.

Tekmira said that it confidentially disclosed details about the MC technology to Alnylam pursuant to their partnership agreements, but that Alnylam “misused those trade secrets by, among other things, filing for patents in its own name, and without including any Tekmira inventors, on a lipid structure that was broad enough to include the MC class.”

Through these patent filings, Alnylam “wrongfully disclosed” Tekmira's trade secrets to “third-party examiners and ultimately to the public upon the patent office's publication of certain of those patent filings.”

Additionally, because Tekmira and Alnylam's agreements contain no provision allowing Alnylam to file patent applications on the MC compounds, the filings are “directly in breach” of provisions in the companies' deals that prohibit one of the parties from claiming an ownership right in the other's technology.

Tekmira is seeking, among other things, damages, “reasonable royalties for Alnylam and AlCana's improper use” of its technology, and a preliminary and permanent injunction barring Alnylam and AlCana from claiming ownership of “siRNA delivery technology that wrongfully contains, is based on, and/or is derived … from any Tekmira confidential and proprietary information.”

Tekmira has also asked the court to terminate all of Alnylam's licenses to its technologies.


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