Thursday, February 24, 2011

MLSC looking into lack of job creation by Alnylam Pharmaceuticals

Back in 2009, IPBiz had a post about a lawsuit involving Max Planck Institute and Alnylam . It appears that Alnylam is in the news again, and not in a good way. In a post titled Life science firms not delivering enough jobs for tax breaks in Massachusetts , MedCityNews reports:

The agency [ Mass. Life Sciences Center =MLSC]may now look to claw back the financial awards it gave to eight companies because they haven’t met a 70 percent job-creation threshold stipulated by the MLSC’s Tax Incentive Program, according to a report from the agency.

Those companies are Facet Solutions Inc., Interlace Medical Inc., Morgan Advanced Ceramics, TEI Biosciences Inc., Alnylam Pharmaceuticals, Constellation Pharmaceuticals, Cubist Pharmaceuticals and Infinity Pharmaceuticals. Together the firms, which received $4.3 million in incentives, had promised to create 161 jobs.

Of some facts about the legal disagreement previously discussed on IPBiz, note the following text within MAX-PLANCK-GESELLSCHAFT v. WOLF GREENFIELD & SACKS, PC, 736 F. Supp. 2d 353 (D. Mass. 2010) :

Whitehead, MIT and Max-Planck ultimately licensed their interest in the Tuschl I patent applications to Alnylam Phar-maceuticals, Inc. ("Alnylam") for therapeutic use. (Levine Aff., Ex. F.) UMass licensed its interest in the Tuschl I patent applications for therapeutic use to Alnylam's competitor, Sirna Therapeutics, which was later acquired by Merck & Co. (Id.) After these interests were licensed, disagreements arose among the co-assignees in late 2003 or early 2004 when Sirna asserted that it had access to certain technology that Max-Planck claimed was solely part of the Tuschl II invention. (Levine Aff., Ex. G at 459, 461 (Erselius Dep.).) The disagreement specifically pertained to the improper use of certain information and data relating to 3' overhangs (a particular species of short RNA molecules), which Max-Planck alleges were developed exclusively in connection with the Tuschl II invention and should not be included in the Tuschl I patent applications. (Mone Decl., Ex. 71 at 264-66, 331-32, 395 (Erselius Dep.); id., Ex. 72 at 54-59, 65-66, 68-69, 115, 315 (Lockhart Dep.).)

The cited case concerned alleged (patent) legal malpractice. From the text:

It is clear from the record that Wolf Greenfield could not have removed the contested data from the Tuschl I patent ap-plications over Whitehead's objection. It is undisputed that Whitehead was represented by Wolf Greenfield, and Wolf Greenfield would have committed legal malpractice by substantively altering a patent application without Whitehead's consent. Wolf Greenfield's actions related to the alleged refusal to delete the mammalian data and the priority claims did not cause Max-Planck's injury. The appropriate course of action once Wolf Greenfield became aware of the conflicting instructions from its joint clients, Whitehead and Max-Planck, would have been to withdraw from the Tuschl I patent prosecution. Wolf Greenfield did not withdraw, however, and Max-Planck subsequently incurred legal fees in connection with the preparation and litigation of the Goldstein petition before the USPTO. Max-Planck's damages in this case, at best, would cover the attorney's fees incurred as a result of Wolf Greenfield's refusal to withdraw. With respect to these fees, the defendant has not established that it is entitled to summary judgment on the issue of proximate causation.

HOWEVER, the cited case also states: The complaint in this case was filed on June 26, 2009, and the Court finds that Max-Planck was aware of appreciable harm caused by Wolf Greenfield's actions prior to June 26, 2006. Max-Planck's claims are time-barred.

**Previous IPBiz post

Max Planck GmbH goes after MIT, Whitehead, UMass


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