Summary Judgment Win for Alnylam in Patent Inventorship DisputePrint PDF
Irell & Manella LLP secured a complete victory for its clients Alnylam Pharmaceuticals, Max Planck Society, Massachusetts Institute of Technology, the University of Massachusetts and the Whitehead Institute for Biomedical Research on September 28, 2015, when Chief Judge Patti B. Saris of the U.S. District Court for the District of Massachusetts granted Alnylam's summary judgment motion in an inventorship dispute over RNA interference patents, termed the Tuschl II patents, brought by the University of Utah. The court held that the University of Utah professor is not co-inventor of the patents.
Tuschl II patents are jointly owned by the defendants and were exclusively licensed to Alnylam, which is a biopharmaceutical company developing novel therapeutics based on RNA interference.
The University of Utah sued the defendants in 2011, alleging that its faculty member contributed to the invention in the emerging field of RNA interference and should have been included as a co-inventor, thereby giving the University of Utah joint ownership of the patents. The court found the University of Utah had no basis for its claim to add its faculty member as an inventor to the patents, and also granted the defendants' motion for summary judgment on Utah's state law claims.
The defendants were represented by Morgan Chu, David Gindler, Alan Heinrich and Sandra Haberny.