RNAi Litigation

Archive for August, 2010

[from Case 1:09-cv-11116-PBS Document 414-17 Filed 08/24/10]

The images below contain portions of the deposition of Alnylam’s CEO, John Maraganore, where he discusses Sirna’s purported licensing of Tuschl II and attempts to deal with the UMass assignment of Tuschl I. UMass attorneys provided these conversations in an exhibit in support of its Motion for Summary Judgment on the counts against UMass.

Click to enlarge

[from Case 1:09-cv-11116-PBS Document 414-17 Filed 08/24/10]

The images below contain portions of the deposition of Alnylam’s CEO, John Maraganore, where his attempts to secure an exclusive license from UMass for its share of rights to Tuschl I are discussed. UMass attorneys provided this conversation in an exhibit in support of its Motion for Summary Judgment on the counts against UMass.

Click to enlarge

From the deposition of Wolfgang Weiss, Max-Planck Tuschl II patent attorney.
[Case 1:09-cv-11116-PBS Document 414-6 Filed 08/24/10]

UMass attorney - Q. I believe you have in front of you an exhibit that was marked as Exhibit 2 during the first day of your deposition. Do you recognize Exhibit 2?
Wolfgang Weiss - A. Yes, I do.

Q. And what is Exhibit 2?
A. Exhibit 2 is a priority document issued by the European Patent Office in October 2001 relating to the European application 00126325 filed on December 1, 2000, in the name of Max-Planck-Gesellschaft zur Förderung der Wissenschaften.

Q. And does the application itself begin on page WW 511?
A. Yes.

Q. And did you file this application on behalf of Max Planck?
A. Yes.

Q. Could you tell us why it was filed in the European Patent Office?
A. This is a routine matter for Max Planck. We were instructed by the client to file the application in the European Patent Office, and since we do file several applications for Max Planck each year, this is a routine matter. We file most of them as a priority application first in the European Patent Office.

Q. And when you say a priority application, could you explain what you mean, please?
A. Yes. This application was filed to establish a priority date, namely, 1st December 2000, but the application was filed without payment of official fees. Read the rest of this entry »

Here is the Tuschl II Priority application with a filing date of December 1, 2000.

This priority application was discussed Bernard Hertel’s (Max-Planck) deposition on the left.

It is the subject of Wolfgang Weiss’ deposition above.

The following is taken from three exhibits UMass has put forth in support of their Motion for Summary Judgment on the counts against UMass. The referenced ‘325 patent application is the priority filing for Tuschl II.

UMass’ memorandum in support of their Motion for Summary Judgement on the counts against them.

From their exhibits:

[from Case 1:09-cv-11116-PBS Document 414-23 Filed 08/24/10]

Chester A. Bisbee Ph.D., J.D. was assistant director of the UMass Medical School technology licensing from the end of 2000 to mid 2003. He then became acting Director in charge of “All aspects of the licensing, budget, patent prosecution” (taken from his deposition).

From Dr. Bisbee’s deposition:

Plaintiffs’ attorney: “Did the University of Massachusetts ever tell Sirna during the negotiations that the ‘832 application relied on the priority claim to the ‘325 application to support any of the claims in the ‘832?”

Chester A. Bisbee’s response: “No. Again, the licensee’s obligation was due diligence and they could look at whatever they want that was publicly available.”

Plaintiffs’ attorney: “So during the course of the UMass-Sirna negotiations, did University of Massachusetts ever tell Sirna that any of the Tuschl I patent applications relied on the ‘325 EP application to support any of the Tuschl I claims?”

Chester A. Bisbee’s response: “No. Again, diligence is the job of the licensee.”

[from Case 1:09-cv-11116-PBS Document 414-22 Filed 08/24/10]

Bharat Chowrira was chief patent counsel and VP of legal affairs at Ribozyme Pharmaceuticals which became Sirna Therapeutics in 2003. He reported to Howard Robin, CEO of Sirna Therapeutics. When Sirna was sold to Merck in 2005 he became Executive Director for licensing and external research at Merck. However, according to his answer in his deposition his role was limited to the siRNA field and helped with the integration of Sirna into Merck at San Francisco’s Sirna location. He was involved in transitioning the Sirna UMass license to Merck. Before this merger he was instrumental in Sirna’s licensing of Tuschl I from UMass.

From Bharat Chowrira’s deposition (directly below; click to enlarge):

[from Case 1:09-cv-11116-PBS Document 414-21 Filed 08/24/10]

Howard W. Robin joined Ribozyme Pharmaceuticals in 2001 as President and became CEO six months later. Further below is his testimony from his deposition (first of the five images, panels 18-21) on how Ribozyme turned away from its ribozyme technology to focus on siRNA as its new business model in formation of Sirna Therapeutics in 2003. The remaining sets of panels contain portions of his testimony from his deposition in exhibits chosen in support of UMass’ Motion for Summary Judgment. These are the only portions of this deposition chosen by UMass.

[from Case 1:09-cv-11116-PBS Document 410-1 Filed 08/20/10]

Defendants’ attorney (on July 2):

“Your July 2 email requests that we return or destroy copies of the invoices for services performed by these attorneys. There is, however, no basis for this request. The invoices were no inadvertently produced, but were intentionally and voluntarily produced to support a claim. The fact that plaintiffs subsequently decided to withdraw that claim does not make the prior production inadvertent. Moreover, it has been the Plaintiffs’ position that the documents do not contain privileged information and the production of them did not waive any claim of privilege. In any event, even after your withdrawl of your claim for fees, the documents remain relevant to other claims or defenses in the case and defendants do not intend to return or destroy them. We will, of course, continue to afford them Highly Confidential treatment under the Protective Offer.”

Plaintiffs’ attorney (on July 7, a Wednesday):

“…your stated reason for refusing to destroy or return the unredacted invoices relating to the services performed for Alnylam is baseless. Contrary to the assertion in your letter, the invoices were not voluntarily produced. At your request, Judge Saris ordered plaintiffs to produce them if plaintiffs were going to claim the legal fees as damages. Plaintiffs are no longer claiming those fees as damages, so there is no justification for defendants to retain the invoices. If you continue to insist on retaining the invoices, please be prepared to address this issue during our call on Thursday (July 8).”

[from Case 1:09-cv-11116-PBS Document 409 Filed 08/20/10]

Plaintiffs’ original claim for damages included, among other things, certain fees for legal services performed by attorneys for Plaintiffs Max-Planck as well as by attorneys for Alnylam. In support of the damages claim, Plaintiffs initially produced redacted attorney invoices reflecting those fees.

On June 2, 2010, the Court ordered Plaintiffs to unredact any invoice entries that Plaintiffs sought to include in their damages claim, so that Defendants could have access to descriptions for the services underlying the fees. Accordingly, Plaintiffs produced unredacted invoices on June 23, 2010, including unredacted invoices for services performed for Alnylam by its own counsel.

On July 2, 2010, Plaintiffs informed Defendants that they were withdrawing their claim for attorney’s fees on behalf of Alnylam (but not Max Planck). Plaintiffs further requested that Defendants return the unredacted invoices that were produced in support of Alnylam’s claim for damages. That same day, Defendants informed Plaintiffs that they refused to return or destroy the unredacted Alnylam invoices.

On July 7, 2010, Plaintiffs again requested that Defendants return or destroy the unredacted Alnylam invoices. The next day, in a meet-and-confer, Defendants once more refused, stating broadly that they believe the Alnylam invoices “are relevant to Max Planck’s claim for legal fees as damages” because, Defendants contend, they can be cross-referenced to the invoices produced in support of Max Planck’s claim. Plaintiffs explained that if Defendants could identify particular entries that are relevant to Max Planck’s damages claim, Plaintiffs would consider excluding them from the invoices to be returned. Defendants refused that request and informed Plaintiffs that they believed they were under no obligation to explain their reasons for retaining possession of the Alnylam invoices. Read the rest of this entry »

Judge Saris’ Standing Order on Sealing of Court Documents

[from Case 1:09-cv-11116-PBS Document 402 Filed 08/18/10]

“Generally speaking, the Court DENIES motions to seal memoranda and attachments in their entirety on the ground that a presumption of openness governs court filings. However, a party may redact a public filing and seek to file under seal truly confidential matters.

The party seeking redaction in a court filing must have good cause for asserting confidentiality beyond mere agreement of the parties to a designation of confidentiality for a particular document or deposition under a protective order.” …

“Any such redacted document shall be filed within seven (7) working days of filing the sealed document. The Court instructs the Clerk to unseal the sealed document if no timely redacted document or motion to resolve dispute is filed.”

Summary of Documents filed under Seal on August 18th:

MEMORANDUM in Support MOTION for Summary Judgment on Counts VII, XV, XVII, and XVIII filed by Board of Trustees of the University of Massachusetts.

Statement of Material Facts re MOTION for Summary Judgment on Counts VII, XV, XVII, and XVIII filed by Board of Trustees of the University of Massachusetts.

DECLARATION of James P. McNamara in Support of MOTION for Summary Judgment on Counts VII, XV, XVII, and XVIII by Board of Trustees of the University of Massachusetts.

DECLARATION of Barbara A. Fiacco in Support of MOTION for Summary Judgment on Counts VII, XV, XVII, and XVIII by Board of Trustees of the University of Massachusetts.

Supplemental MEMORANDUM in Support re MOTION to Compel Defendants’ Production of Documents and Testimony Improperly Withheld on the Basis of an Improper Assertion of a “Common Interest” filed by Alnylam Pharmaceuticals, Inc. and Max-Planck.

DECLARATION of Michael H. Strub, Jr. with three exhibits in support of Memorandum in Support of Motion to Compel, by Alnylam Pharmaceuticals, Inc. and Max-Planck.

[from Case 1:09-cv-11116-PBS Document 400 Filed 08/13/10]

Pursuant to Fed. R. Civ. P. 56, Defendant UMass moves for summary judgment on Count VII (Ch. 93A), Count XV (unjust enrichment), Count XVII (Ch. 93A) and Count XVIII (declaratory judgment) of the Amended Complaint. These counts asserted against UMass fail to raise a genuine issue of material fact, and UMass is entitled to judgment as a matter of law for the reasons set forth in detail in UMass’s accompanying Memorandum.

Request for Oral Argument
Pursuant to Local Rule 7.1(D), counsel for University of Massachusetts hereby requests oral argument on this Motion.

[from Case 1:09-cv-11116-PBS Document 398 Filed 08/13/10]

During the hearing (on June 2nd), counsel for MIT produced to the Court and provided to Plaintiffs’ counsel a copy of the Abrams Email, which Magistrate Judge Dein previously had reviewed in camera (I was the only one in court who was not allowed to see this evidence).

In the email, Irene Abrams, MIT’s Technology Licensing Officer, asked Dr. Jarrell to “analyze the scope of claims of Tuschl I as filed (including the Tuschl II data). In particular we (MIT) would like to know if the assertion that Tuschl I gives rights to mammalian and/or human siRNA’s, and overhangs is valid.” Ms. Abrams goes on to ask whether it is possible to remove the Tuschl II data from the Tuschl I applications, and if the data were removed, “what would the remaining scope of claims be in Tuschl I?”

The email in question was a February 13, 2004 email message from Irene Abrams, a Technology Licensing Officer at MIT, to MIT attorney Dr. Jarrell, copied to Karen Rivard, who was in the Office of the MIT General Counsel. The email indicated that Dr. Jarrell had been asked to analyze the impact on the Tuschl I applications of removing the Tuschl II data. This is the evidence that the Defendants put forth in camera to support their contention that the >1000 documents that the Plaintiffs are seeking are protected by the common interest doctrine.

The following attached documents [Case 1:09-cv-11116-PBS Document 399 Filed 08/13/10] were completely redacted:

• Exhibit A is a true and correct copy of a February 13, 2004 email message from Irene Abrams, a Technology Licensing Officer at MIT, to Brend Jarrell, which was marked as Exhibit 5 during Dr. Jarrell’s deposition.
• Exhibit B is a true and correct copy of certain pages of the transcript, in minuscript form, of the June 2, 2010 hearing before the Hon. Patti B. Saris.
• Exhibit C is a true and correct copy of certain pages of the certified transcript, in minuscript form, of the videotaped deposition of Brenda Jarrell, taken on July 21, 2010.