RNAi Litigation

Archive for December, 2010

From Steve: ELECTRONIC NOTICE Setting Hearing on 455 Plaintiffs’ Motion to Compel Production of Communications Involving Wolf Greenfield under Joint Client Rule: Motion Hearing set for 12/10/2010 11:00 AM in Courtroom 15 before Ch. Magistrate Judge Judith G. Dein.

[from Case 1:09-cv-11116-PBS Document 530 Filed 11/29/10]

Whitehead understood that the co-owners of the Tuschl I applications were co-clients of Wolf Greenfield [from the Plaintiffs]

Defendants assert that Whitehead never consented to and was unaware of a joint client relationship with Max Planck. The only evidence that Defendants cite is the testimony in 2009 by Martin Mullins, vice president of Whitehead, given during his deposition in this case.

The contemporaneous documentary evidence is to the contrary. For example, a June 2004 email exchange between Irene Abrams of MIT, Lita Nelsen of MIT, and John Pratt of Whitehead concerning Dr. Phil Zamore’s assignment of his inventorship interest in the Tuschl I application to UMass contradicts Mr. Mullins’ post-litigation characterization of the parties’ relationship. In the exchange, the parties are discussing the attorney who should analyze the propriety of the assignment. Ms. Nelsen says, “I will have Irene [MIT] look into this with Helen Lockhart [lead Tuschl I prosecution counsel at Wolf Greenfield] and get her opinion on it. We can also ask Brenda Jarrell (who is our attorney, rather than representing all parties).” Ms. Abrams [MIT] responds that she will “ask Helen Lockhart [Wolf Greenfield] for her opinion - although she also represents U Mass since they are a co-owner of the patent.” Thus, both Ms. Nelsen and Ms. Abrams understood that Dr. Lockhart represented all of the Tuschl I co-owners, not just Whitehead alone, in contrast to MIT’s separate counsel Brenda Jarrell. Notably, Mr. Pratt of Whitehead did not correct their understanding of Dr. Lockhart’s role.

The fact that Ms. Abrams [MIT] understood that Dr. Lockhart represented all of the Tuschl I co-owners, and not simply Whitehead alone, is particularly significant given that, at precisely this time, Ms. Abrams [MIT] was working with Dr. Lockhart on the Tuschl I applications on behalf of Whitehead itself. In May 2004, Tom Ittleson, then the Director of the Intellectual Property Office at Whitehead, sent an email to Helen Lockhart at Wolf Greenfield, which he copied to others at MIT, telling Dr. Lockhart that she should “look to Irene Abrams[MIT] representing Whitehead for guidance regarding prosecuting” the “jointly owned Whitehead/MIT/UMass/Max Plank RNAi patent portfolio that is managed by Whitehead.” Mr. Ittleson does not suggest that Dr. Lockhart was solely Whitehead’s attorney, and both Ms. Abrams [MIT] and Ms. Nelsen [MIT] in fact understood that this was not the case.