By Doug Macron
Tekmira Pharmaceuticals last week asked a court to dismiss a patent-infringement lawsuit filed against it by Alnylam Pharmaceuticals, arguing that the litigation is merely an attempt by Alnylam to “gain leverage” in a separate legal dispute between the companies.
"It is important for our shareholders to understand that we are confident that Tekmira has access to the intellectual property we require for the development of our own products and for collaboration with our pharmaceutical partners,” Tekmira President and CEO Mark Murray said in a statement this week. “This lawsuit is absolutely without merit.”
This latest legal development between the firms began in January, when Alnylam and partner Isis Pharmaceuticals sued Tekmira for allegedly infringing certain patents related to the encapsulation of plasmids or nucleic acids in lipids (GSN 1/19/2012).
In 2007, Alnylam exclusively licensed the patents from Inex Pharmaceuticals, the former parent of Tekmira predecessor Protiva Biotherapeutics (GSN 1/11/2007). At the time, Inex and Protiva were involved in their own legal row, but eventually settled their differences when Inex, which had renamed itself Tekmira, merged with Protiva in 2008 (GSN 4/3/2008).
In its suit, Alnylam said that a deal it struck with Tekmira at the time of the merger only included access to the intellectual property Alnylam licensed from Inex to develop and market RNAi therapeutics against certain gene targets.
“Tekmira has no licensed rights to use, sell, offer for sale, make or have made, or import any product under the … patents exclusively licensed to Alnylam other than for use with identifying, developing, and commercializing RNAi products to ... three targets,” Alnylam and Isis claim in the lawsuit.
Yet in 2010, Tekmira forged a four-year target-validation deal with Bristol-Myers Squibb that included the use of Tekmira's lipid nanoparticle delivery vehicles, then known as stable nucleic acid-lipid particles, or SNALPs (GSN 5/13/2010).
Alnylam and Isis said in their suit that this arrangement violates Alnylam's licensing deal with Tekmira.
Last week, Tekmira argued in a court filing that Alnylam's patent-infringement suit is an “ill-conceived” attempt to pressure Tekmira as the companies continue to wage a legal battle over access to key siRNA delivery technology.
As reported by Gene Silencing News, Tekmira sued Alnylam in early 2011 for allegedly misappropriating and misusing trade secrets related to its lipid nanoparticle delivery technology (GSN 3/17/2011).
Specifically, Tekmira charges that Alnylam used Tekmira know-how that had been licensed for use with specific drug candidates to develop its own second-generation lipid nanoparticles.
“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,” Tekmira's Murray said during a conference call held at the time.
Tekmira later expanded the suit to include Alnylam collaborator AlCana Technologies. Alnylam has countersued.
As that case moves ahead, Tekmira said in last week's court filing, Alnylam began to take a “run-out-the-clock” strategy, “doing everything in its power to delay the trial beyond Tekmira’s cash runway,” which was only expected to last through 2012.
“But the state court saw through Alnylam’s tactics,” Tekmira added, “observing in a recent order, 'this
court remains troubled by what it perceives to be a strategy on the part of the defendants to delay resolution of this matter.'”
When the court set an Oct. 30 trial date for the dispute, Alnylam filed its patent-infringement suit “as a further effort to gain leverage over Tekmira in the state court action and run out its cash reserves,” Tekmira said.
In its motion to dismiss, Tekmira painted the latest legal action as “unusual,” with one company trying to use another's patents against it.
“This case presents the unusual situation in which the plaintiff is claiming that the defendant infringes the defendant’s own patents,” Tekmira said.
According to Tekmira, the companies' arrangements “explicitly” limit Alnylam's right to enforce Tekmira's patents “against third parties.
“Tekmira did not grant Alnylam the right to enforce Tekmira’s own patents against Tekmira,” the company noted.
As further evidence that Alnylam is merely pursuing the latest legal action to bolster its position in the other litigation, Tekmira provided the court with an e-mail sent from Alnylam President and COO Barry Greene offering “congratulations” to Tekmira's Murray on the Bristol-Myers Squibb deal.
“It was only after Tekmira sued Alnylam in state court and made public statements about its cash position that Alnylam decided to file this suit,” Tekmira said.
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